Appeal No. 2005-2622 Page 6
Application No. 09/923,089
[however,] 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, we are unpersuaded that Clark necessarily determines whether each of its
input devices is a mouse or a set of function keys and would be so recognized by
persons of ordinary skill. To the contrary, the reference may operate in the following,
different manner as suggested by the appellants.
[T]he processor in Clark could have a hard coded read-only memory that
responds to the different inputs from a fixed set of connected input
devices. In such a system there would never be any need for Clark's
processor to make a determination as to what type or capabilities are
associated with the input device of Clark's user panel, or what type or
capabilities are associated with the input device of Clark's operator panel.
(Req. Reh'g at 4.) The absence of determining whether each input device is a mouse or
a set of function keys and then responsively displaying a corresponding user interface,
negates anticipation. Furthermore, the examiner does not allege, let alone show, that
the addition of Coutts cures the aforementioned deficiency of Clark. Therefore, we
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