Appeal 2006-2911
Application 10/005,551
thing described in the reference, and that it would be so recognized by person of
ordinary skill.’” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-1951
(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 for a given set of circumstances is not sufficient.” Id. 948 F.2d at 1268, 20
USPQ2d at 1749.
Applying these guidelines, we find that the Examiner has not pointed to, nor
have we found, any teachings in Daniels showing that the claimed values for N and
M are necessarily present in Daniels. Therefore, the 35 U.S.C. § 102 rejection of
claim 4 cannot be sustained.
With respect to claim 7, Appellants argue that Daniels fails to teach the
claimed requirement of “wherein the multiplexer circuit includes a multiplexer
adapted to select one of at least three input binary quantities.” Mistakenly
identifying this limitation with claim 16, the Examiner argues that “Daniels does
select one of at least three input binary quantities because Daniels
increment/decrement network output[s] an incremented quantity and [a]
decremented quantity and the temporary register outputs another quantity.”
(Answer 5-6).
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