Appeal No. 2006-2195 Page 4
Application No. 09/773,255
It is our view, after consideration of the record before us, that the
evidence relied upon by the examiner does not support the examiner’s
rejection of claims 3, 4 and 8-17. Accordingly, we reverse.
We consider the examiner’s rejection of claims 3, 4 and 8-17 as being
anticipated by Dent. Since Appellants’ arguments with respect to this
rejection have treated these claims as a single group which stand or fall
together, we will consider independent claim 3 as the representative claim
for this rejection. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
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,
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