Appeal No. 2003-0750
Application 09/310,650
or nodes are structurally identical in Nagao. 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 Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” Id. citing
Continental, 948 F.2d at 1269, 20 USPQ2d at 1749.
In view of the above discussion, since all of the claim
limitations are not present in the disclosure of Nagao, we do
not sustain the Examiner’s 35 U.S.C. § 102(b) rejection of
independent claims 56 and 109, nor of claims 57-71, 74-78,
80, 81, 88-94, 97, 110, 111, 114, 117 and 118 dependent thereon.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejections of dependent claims 72, 73, 79, 82-87, and
115 (based on the combination of Nagao and Wical), and of
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