Appeal No. 2006-1482
Application No. 10/619,890
means checks, we find no disclosure of a continuity check.
Although the examiner is correct that resistor 60 sets up a
diagnostic current for controller 59, which performs the
diagnostic checks, we find no evidence that Adams necessarily
includes a continuity check. Inherency cannot be established by
possibilities or probabilities, but must necessarily flow from
the operation of the device. Because the examiner has not
established that Adams necessarily includes a continuity check
module, we find that the examiner has failed to establish a prima
facie case of anticipation of claim 3. Accordingly, the
rejection of claims 3-5 under 35 U.S.C. § 102(b) is reversed.
We turn next to claims 7 and 15. Because these claims have
been argued together by appellants, we select claim 7 as
representative of the group. Turning to claim 7, the claim
recites that the circuitry verifies that the firing capacitor
has a capacitance above a first value and below a second value.
The examiner’s position (answer, page 5) is that this
feature is inherent in Adams. Appellants assert (brief, page 12)
that there is no clear express disclosure of a capacitance check.
appellants add (id.) that to the extent that the claim language
is construed under 35 U.S.C. § 112, sixth paragraph, Adams does
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