Appeal No. 2004-1621 Page 5
Application No. 08/653,425
USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983)). "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, Solhjell "relates to a mouse used for data entry into a computer system."
Col. 1, ll. 7-8. A "ball is mounted on the bottom side of the mouse housing." Id. at ll. 25-
26. "[T]he ball is touching three or four rollers, where one or two such as 18 in
FIG. 5 are freerolling and the other two such as 16, 17 in FIG. 5 are connected to
systems for detecting the direction of the revolution of the roller and the length of rolling.
One of these detection rollers is referred to as the x-axis controller 16 and the other one
(90 degrees off the x-axis roller) is referred to as the y-axis controller 17 (see FIG. 5)."
Col. 2, ll. 24-31.
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