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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