Appeal No. 2003-1218
Application No. 09/019,278
matter within the ambit of the instant claims, the rejection for anticipation can stand only
if Remedi inherently describes features within the scope of the claims. However, our
reviewing court has set out particular requirements for showing inherency.
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).
Since Remedi has not been shown to meet all requirements of any of the
respective independent claims, we cannot sustain the rejection of any of claims 1
through 16.
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