Appeal No. 2006-1095 Page 6
Application No. 10/280,188
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). 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.”
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.” In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (internal
citations omitted). To anticipate, every element and limitation of the
claimed invention must be found in a single prior art reference, arranged as
in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research
Foundation v. Genentech, Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
Appellants argue that Boiarski does not teach a coupling region
supporting at least two electromagnetic modes of propagation wherein a
change in the refractive index affects the interaction of the propagation
modes, as required by the language of claim 1 [brief, pages 2-3].
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