Appeal No. 2006-1785 Page 6
Application No. 10/768,827
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-6, 77 USPQ2d 1321, 1325-6 (Fed. Cir. 2005),
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). “Every element of the claimed invention must be literally present,
arranged as in the claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226,
1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989) (internal citations omitted).
(a) Appellants argue that Bodamer does not disclose “establishing
communication between said application and an emulating system, said
emulating system responding to a request from said application,” as recited
in claim 1 [brief, pages 10 and 11].
The examiner disagrees [answer, page 15]. The examiner points to fig.
2 as showing the communication connection for the emulating system [id.].
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