Appeal No. 2003-0882 Page 7
Application No. 09/911,198
be a voltage potential across the source and drain of the
transistor. By modulating the EN terminal to LOW, NMOS
transistor Q10 will prevent current flow between node N30 and Gnd.
As a result, during the sleep mode, when EN goes LOW, Q5-Q8 will
be disabled, by the lack of current flowing between the source
and drain of transistor Q10. Because there is no path to ground
for Q5-Q8 when EN goes LOW, without a path to ground, the NMOS
and PMOS transistors Q5-Q8, will not, in this mode, form an
inverter circuit, according to the textbook supplied by
appellants, and therefore will not form a circuit that furnishes
a signal to an output terminal indicative of a value that is
programmed into a latch, as required by claim 1. 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.” “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.” In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations
omitted). From all of the above, we find that the examiner has
failed to establish inherency in Jung with respect to the claim
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