Ex Parte Tamura et al - Page 5

                Appeal 2006-3421                                                                                 
                Application 09/751,889                                                                           
                                            PRINCIPLES OF LAW                                                    
                       In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),                    
                the Board may rely on one reference alone without designating it as a new                        
                ground of rejection.  In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67                        
                (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444 n.2                           
                (CCPA 1966).                                                                                     
                       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.”  In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.                       
                Cir. 1999).                                                                                      
                       In determining the subject matter being claimed, the term “or” has                        
                been construed as designating a choice between one of two alternatives.                          
                Brown v. 3M, 265 F.3d 1349, 1352, 60 USPQ2d 1375, 1377 (Fed. Cir.                                
                2001); Kustom Signals Inc. v. Applied Concepts Inc., 264 F.3d 1326, 1331                         
                60 USPQ2d 1135, 1138 (Fed. Cir. 2001).                                                           
                                                  ANALYSIS                                                       
                       When Henderson runs a simulation of the topology of a                                     
                telecommunications network, the current and future performance standards                         
                of the network are verified in the simulation.  An inherent benefit of running                   
                simulations of the network is determining which proposed changes to the                          
                network will not satisfy current as well as future predetermined performance                     
                standards.  As indicated supra, Henderson interrelates future-forecasting                        
                scenario parameters and design-supporting scenario parameters.  During the                       
                interrelating of the different parameters, Henderson satisfies at least the first                
                claimed alternative of executing “a simulation corresponding to the future-                      

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