Appeal No. 2004-0856 Page 5
Application No. 09/676,704
and 17 include similar limitations. Giving effect to all the limitations, claims 1, 16, and
17 require detecting a fastest one of a plurality of clocks and operating a storage
element in a single clock domain corresponding to the fastest clock.
2. OBVIOUSNESS DETERMINATION
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. "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) (quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991)) "Inherency . . . 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 Oelrich, 666 F.2d 578, 581, 212
USPQ 323, 326 (CCPA 1981) (citing Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ
665, 667 (Cust. & Pat.App. 1939)).
Here, Leong discloses "a cascadable multi-channel memory with dynamic
allocation suitable for use in a network environment." Col. 1, ll. 6-9. As
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