Appeal No. 2002-1672
Application No. 09/412,124
After reviewing the Circello reference in light of the
arguments of record, we are in general agreement with Appellants’
position as expressed in the Briefs. Our interpretation of the
disclosure of Circello coincides with that of Appellants, i.e.,
we simply find no disclosure, either in the passages cited by the
Examiner, or elsewhere in the reference, that discloses the
before and after acquiring of instructions on occurrence of a
triggering event. Even assuming, arguendo, the breakpoint
operation in Circello could be considered a “triggering event,”
we find, at best, the acquiring of instructions after the
breakpoint, not before.
In answering Appellants’ arguments, we recognize that the
Examiner has offered (Answer, page 17) an inherency argument
asserting that a user would find it inherent to designate an
event occurrence in order to examine the circumstances
surrounding the event. We agree with Appellants (Reply Brief,
page 3), however, that Circello is totally devoid of any support
for such assertion. To establish inherency, evidence must make
clear that the missing descriptive matter is necessarily present
in the thing described in the reference and would be recognized
as such by persons of ordinary skill. In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing
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