Appeal No. 2006-1597
Application No. 09/218,822
make clear that the missing descriptive matter is necessarily present in the thing described in the
reference and would be recognized as such 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.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.” Id. citing Continental, 948
F.2d at 1269, 20 USPQ2d at 1749.
In view of the above discussion, since all of the claim limitations are not present in the
disclosure of Riggins, we do not sustain the Examiner’s 35 U.S.C. § 102(e) rejection of
independent claims 1, 14, and 20, nor of claims 2-13, 15, 16, 18, 19, and 21-25 dependent
thereon.
Turning to a consideration of the Examiner’s 35 U.S.C. § 102(e) rejection of appealed
claims 1-16 and 18-25 based on each one of Khosla and Anderson, we do not sustain these
rejections as well. In our view, the Examiner’s stated rejections based on Khosla and Anderson
suffer the same deficiencies as discussed supra with regard to Riggins.
We don’t necessarily disagree with the Examiner’s summation of the operation of the
systems of Khosla and Anderson, both of which generally involve the capturing of data
associated with a live event and transporting the captured data to a game player permitting
interaction with an event simulation. We find no indication, however, from the Examiner as to
how such summation would satisfy the language of the appealed claims. As previously discussed
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