Appeal No. 2005-1256
Application No. 09/988,593
anticipation which has not been made. Moreover, 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) citing Continental Can Co. v. Monsanto Co., 948 F.3d 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. At 1269, 20 USPQ2d at 1749 (quoting In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
Basically, the examiner is charging “inherency” of a region doped by only an
impurity of a first conductivity type in Flaker, and appellants refute that such is shown, or
inherent, in Flaker. Accordingly, the examiner was put to his proof to provide evidence
of a region doped by only an impurity of a first conductivity type in Flaker, and the
examiner has offered nothing to convince us of the correctness of his position. We are
unconvinced that “precise control of the oxidation depth” in Flaker (column 6, lines 18-
19) is tantamount to a teaching of a region doped by only an impurity of a first
conductivity type, as apparently alleged by the examiner.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007