Appeal 2007-0510
Application 10/699,507
1 The database is available globally from any personal computer having
2 suitable client software installed and suitable network connectivity. Smrcka,
3 para. [0038].
4 D. PRINCIPLES OF LAW
5 “A claim is anticipated only if each and every element as set forth in
6 the claim is found, either expressly or inherently described, in a single prior
7 art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631,
8 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
9 To establish inherency, the extrinsic evidence “must make clear that
10 the missing descriptive matter is necessarily present in the thing described in
11 the reference, and that it would be so recognized by persons of ordinary
12 skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
13 USPQ2d 1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be
14 established by probabilities or possibilities. The mere fact that a certain
15 thing may result from a given set of circumstances is not sufficient.” Id. at
16 1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212
17 USPQ 323, 326 (CCPA 1981)).
18 Additionally, a claimed invention is not patentable if the subject
19 matter of the claimed invention would have been obvious to a person having
20 ordinary skill in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc.,
21 127 S. Ct. 1727, 82 USPQ2d 1385 (2007); Graham v. John Deere Co., 383
22 U.S. 1 (1966).
23 Facts relevant to a determination of obviousness include (1) the scope
24 and content of the prior art, (2) any differences between the claimed
25 invention and the prior art, (3) the level of skill in the art, and (4) any
11
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