Appeal No. 2004-1057
Application No. 09/844,385
actuator member relative to the track bearing member" as recited
in Appellants' claim 9. The Examiner has not provided any
evidence to show this limitation is known. The Examiner's
argument that Gorg's teaching of a "traditional ballpoint pen"
reads on no net rotation actuator amounts to an argument that
Gorgi inherently teaches this limitation. Therefore, the
question before us is whether Gorgi inherently teaches this
claimed limitation.
Our reviewing court stated "[t]o 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, 49 USPQ2d 1949, 1950-1952
(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 Can Co. v. Monsanto Co., 948 F.2d 1264, 1269,
20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
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