Appeal No. 2003-0768
Application No. 09/396,287
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) citing Continental Can Co. v.
Monsanto Co., 948 F.3d 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., at 1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981).
The examiner has not shown that Kovarik’s system must require materials to be
selected from a list of materials and that a second list must be produced therefrom.
Therefore, we find that it cannot be said that Kovarik inherently discloses the second list
or the selection of materials to produce a manifest, as claimed. We do not agree with
the examiner that it would be logical to add another list of materials, merely because
Kovarik’s system may be customized by the user. Where is the teaching to produce a
second list from the first list, and why would the skilled artisan have been led to do this
in Kovarik, especially since, in the example given in the patent, Kovarik is dealing with a
luggage tracking system at an airport? Of what possible use would a second list of the
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