Appeal No. 2004-2228
Application No. 09/652,002
video monitor 204, without requiring direct use of a cradle 186. From this teaching,
combined with the reference’s claim 1 recitation at column 19, which places no limitation
on how data may be transferred to a local or remote computer station, the examiner
concludes that Salvati anticipates the language in controversy that sets forth the
“wireless” or “digital mobile network” aspect of the claims.
Anticipation requires the presence in a single prior art reference disclosure of
each and every element of the claimed invention, arranged as in the claim. Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221
USPQ 481, 485 (Fed. Cir. 1984). “Anticipation is established only when a single prior
art reference discloses, expressly or under principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). Since the rejection does not point
out any teaching of the express requirements of the claims relating to a “digital mobile
network,” the rejection of at least claims 1 and 17 must be founded on the principles of
inherency. Our reviewing court, however, has set out clear standards for establishing
inherency.
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.” “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.”
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