Appeal No. 2002-2164
Application No. 09/067,599
Section 102 rejection of claim 33 over Williams
In response to the Section 102 rejection of claim 33 over Williams, appellants
argue that Williams fails to teach the details of any pattern matching techniques. (Brief
at 7.) Williams relates to use of “on-now pattern match logic” and “Magic PacketTM
match logic” (elements 60 and 62 in Fig. 2), described at column 4, line 45 et seq. As
referenced in columns 1 and 2 of Williams, the “On-Now Power Management Scheme”
and the “Magic PacketTM” scheme were known and described in the prior art at the time
of Williams’ invention.
We agree with appellants that Williams fails to describe the match logic in
sufficient detail to support a finding of anticipation with respect to the subject matter of
instant claim 33. The rejection (Answer at 7) appears to rely on a theory of inherency in
regard to the claimed requirement of providing pointers.
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 (e.g., a prior art description of the details of the
standards utilized by Williams) in support of the finding by the examiner that is disputed
by appellants, the rejection must fail.
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