Appeal No. 2002-1995
Application No. 09/071,488
evidence in the instant disclosure buttressing the meaning of the
claimed “mouse including a force actuated pointer,” it is simply
unreasonable for the examiner to take the position that “any user
input interface, which includes an equivalent pointer actuator
and an equivalent single-button actuator, for navigating in
computer program applications, is considered to be a mouse of
this pending application.”
Still further, the examiner asserted that Michel
“inherently” includes the claimed mouse. Inherency may not be
established by probabilities or possibilities. In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). Inherency
requires that a thing must, necessarily occur or exist. There is
no reason that a mouse must necessarily exist in Michel.
Accordingly, the examiner’s reliance on inherency is misplaced.
Since Michel clearly fails to disclose or suggest the
claimed mouse including a force actuated pointer, and neither
Durrett nor Matthews is of any help in this regard, we will not
sustain the rejection of any of claims 1-9, 14-18, and 21-24
under 35 U.S.C. § 103.
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