Appeal No. 2003-2138
Application No. 09/710,314
by our reviewing court, we must first determine the scope of the claim. "[T]he name of
the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369, 47 USPQ2d 1523, 1529
(Fed. Cir. 1998). Therefore, we look to the limitations set forth in independent claim 6.
From our review of the teachings of Fukutomi, we find that the specific sequence of
steps is not expressly taught by any one embodiment of Fukutomi as would be required
by Section 102.
To the extent that the rejection may be based on the principles of inherency -
since Fukutomi does not expressly describe that which is claimed -- we note that our
reviewing court has set out clear standards for a showing of inherency, which have not
been attained in the instant case. 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)
(citations omitted). We are persuaded by appellants that the Section 102 rejection of
each claim on appeal is in error. We thus do not sustain the rejection of claims 6-10
under 35 U.S.C. § 102 as being anticipated by Fukutomi.
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