Appeal No. 2006-2103
Application No. 09/780,817
determination which visible and undefined objects need to be added to a new scene, we find
no description of any such determination in Fisher which would correspond to the specific
VU set determination operation recited in the claims.
In fact, the Examiner (Answer, pages 3 and 8), rather than pointing to where the
claimed VU set determination feature appears in the Fisher reference, merely suggests that
the various claimed features are inherent in Fisher. We agree with Appellant (Brief, page 10;
Reply Brief, pages 5-7), however, that any suggestion of inherency with regard to the
existence of the claimed VU set determination feature in Fisher is simply not supported by
any disclosure in the Fisher reference. To establish inherency, evidence must 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 Fisher, we do not sustain the Examiner’s 35 U.S.C. § 102(e) rejection of
independent claims 1, 10, and 19, nor of claims 2-7, 11-16, and 20-25 dependent thereon.
Turning to a consideration of the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claims 8, 9, 17, 18, 26, and 27 based on separate combinations of Fisher with
-5-
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007