Appeal No. 2002-1531
Application No. 08/828,548
been attained in the instant case. 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).
We are persuaded by appellant that the Section 102 rejection of each claim on
appeal is in error. We thus do not sustain the rejection of claims 1-8, 11-17, and 20
under 35 U.S.C. § 102 as being anticipated by White. The examiner maintains that
White teaches the recited steps are carried out in or by the telephone exchange. (See
answer at pages 3-10.) Appellants maintain that White does not teach or suggest the
recited steps are carried out by the exchange. (See brief at pages 5-7, and reply at
pages 2-4.) We agree with appellant that the examiner has not established where
White teaches registering the computer as a telephone in the exchange. The examiner
maintains that White teaches registering at column 11, but we agree with appellant that
this portion of White teaches the use of an outside database and translation is
performed by an Internet gateway router. Clearly White does not teach or fairly suggest
the claimed registering step. Additionally, the examiner maintains that White teaches
the translation of voice to packets and vice versa, but appellant argues that the Internet
gateway router performs this function and that the router is not part of the exchange.
Therefore, White does not teach the claimed “generating data packets containing
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