Appeal No. 2002-1397
Application No. 09/310,800
Thus, under what we consider to be the proper interpretation of the independent
claims, we agree with appellant that Tsutaki fails to anticipate the instant invention.
The examiner points to no support in the reference for the position that the
structure shown in Figure 3E “is operable to record/reproduce multiple tracks.” Nor do
we find any such indication in the reference. Since Tsutaki does not expressly support
the examiner’s position, the finding is necessarily based on a theory of inherency. With
respect to what may be “inherent,” however, our reviewing court has set out clear
standards for such a showing. To establish inherency, the extrinsic evidence “must
make clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary
skill.” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted). Absent evidence in support of a finding by the examiner that is
disputed by appellant, the rejection must fail.
Since the examiner has not shown any of the independent claims to be met by
the reference, we do not sustain the rejection of claims 1, 3-6, 8-10, and 19-29 under 35
U.S.C. § 102 as being anticipated by Tsutaki.
Claim 19 -- new ground of rejection
We enter the following new ground of rejection in accordance with 37 CFR
-5-
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