Appeal No. 2004-0933
Application 09/256,680
and traced in the order prescribed by the linked list of
reset stamps. Consequently, such searching must involve the
tracing of all directories and subdirectories, where the
files are stored. Thus, Pongracz does disclose the
limitation of tracing directories to find each application
in the linked list, as broadly claimed.
Appellants reply that the examiner errs in asserting that
tracing back nested directories is implicit and inherent (RBr4).
An inherent property must necessarily be present, and it
must be so recognized by persons of ordinary skill in the art.
See 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. at 1269, 20 USPQ2d at 1749
(quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981)). We have already found that Pongracz does not teach
"a linked list of application components installed on the
computer system" and, therefore, necessarily would not teach
"tracing back nested directories to find a target directory for
each application component in the linked list." Assuming
Pongracz did teach a linked list of application components
(although it is not apparent how this would fit in with the
Pongracz backup system) and assuming that it is probable that the
computer system in Pongracz uses directories and nested
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