Appeal No. 2004-0913
Application No. 08/940,760
What the examiner may deem to be an “inherent” teaching of Bresalier has not
been established on this record. Our reviewing court 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.”
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted).
Appellants’ specification teaches that certain transcoding techniques and error
control schemes are more effective when used to format particular data types. (Spec.
at 7, final ¶ et seq.) Appellants contend (Brief at 6) that it is not known -- and thus was
not known at the time of invention -- to select a transcoding technique and an error
control scheme to format data based on the data type. We must accept appellants’
contention as correct, to the extent that it reflects the artisan’s knowledge at the time of
invention, because the contention is effectively uncontroverted. We presume that had a
contradictory teaching in the prior art been available, the examiner would have provided
it.
Therefore, since the evidence relied upon by the examiner is not sufficient to
establish a case for prima facie obviousness, we cannot sustain the § 103 rejection of
claims 1-3 and 5-36.
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