Appeal No. 2002-1130
Application 09/224,234
for transmissions from available communication systems in order
to carry out desired communication.” See page 3 of the
Examiner’s answer.
“To establish inherency, the extrinsic evidence ‘must make
clear that the missing descriptive matter is necessarily present
in the thin described in the reference, and that it would be so
recognized by person of ordinary skill.’” In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51, (Fed. Cir. 1999) citing
Continental Can Co v. Monsanto Co., 948 F.3d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not
be established by probabilities or possibilities. The mere fact
that a certain thing may result for a given set of circumstances
is not sufficient.” Id. citing Continental Can Co. v. Monsanto
Co., 948 F.3d 1264, 1269, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998).
Turning to Appellants’ claim 1, we find that the claim
recites “comprising the step of notifying through at least one
broadcast message the terminal of which modulation methods are
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