Appeal No. 2004-0507
Application No. 09/476,862
position during repeated processing steps. In the Examiner’s
view, this disclosure inherently would involve the
synchronization of newly recorded data with previously recorded
data. We find, however, no evidence forthcoming from the
Examiner that would support such a conclusion. To establish
inherency, evidence must make clear that the missing descriptive
matter is necessarily present in the thing described in the
reference and would be recognized as such 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.2d 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.
citing Continental, 948 F.2d at 1269, 20 USPQ2d at 1749.
It is further our view that even assuming, arguendo, that
the Examiner’s assertion of inherency is correct, the limitations
of independent claim 3 (and its dependent claims 4-6) and
dependent claim 9 (and its dependent claims 10-12) would not be
satisfied. It is apparent from the clear language of the claims
that it is not merely synchronization of new data with previous
data that is being claimed but, rather, a particular manner in
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