Appeal No. 2005-0171
Application No. 10/064,380
Although the Examiner contends that Appellants have ignored
the Examiner’s evidence that supports the assertion of inherency,
our review of the record before us reveals no such evidence
forthcoming from the Examiner. To establish inherency, evidence
must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference and would be
recognized as such by persons of ordinary skill. In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (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, 948 F.2d at 1269, 20 USPQ2d
at 1749.
In view of the above discussion, since all of the claim
limitations are not present in the disclosure of Carroll, we do not
sustain the Examiner’s 35 U.S.C. § 102(e) rejection of independent
claim 73, nor of claim 78 dependent thereon.2
We also do not sustain the Examiner’s 35 U.S.C. § 102(e)
rejection, based on Carroll, of independent claims 74 and 77 (and
2 We make the observation that the language “the sequence of bits” at
line 6 of claim 73 lacks antecedent basis.
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