Appeal No. 2006-0774 4
Application No. 09/952,349
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
With regard to both the rejection of claims 1 and 7 through
10 based on Mayer and the rejection of claims 1 and 6 through 10
based on Lieber, the only issue presented for our consideration
on appeal is whether the claimed methods reflected by appellant’s
independent claims 1 and 6 are “inherent” in the operation and
use of the respective apparatus described by Mayer and Lieber for
their intended purpose. It is by now well settled that 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 the art. Inherency
may not be established by probabilities or possibilities. The
mere fact that a certain result or characteristic may occur or be
present in the prior art is not sufficient to establish the
inherency of that result or characteristic. See, In re
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