Appeal No. 2003-1895
Application 08/819,536
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 possibili-
ties. 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).
Upon our review of Smith and Biliris, we fail to find
any teaching that would lead a person of ordinary skill in the
art to conclude that the missing descriptive matter, an object
catalog containing for each class type a class specification that
includes one or more attributes and member functions, is
necessarily present in these references. Therefore, we fail to
find that the Examiner has met his burden of establishing a prima
facie case.
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