Appeal No. 94-4173
Application 07/868,492
unique pesticidal composition which is unlike a simple mixture of
dichlorvos and chlorpyrifos”; i.e., that there is a difference
between the claimed and prior art products. Answer, p. 5.
Inherency must be based on inevitability, and not speculation.
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)
(“[i]nherency, 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”).
Accordingly, the rejection is reversed.
Since the examiner has not discharged his responsibility of
establishing a prima facie case of (i) obviousness for the method
of claims 8 through 14, or (ii) anticipation of the compositions
of claims 15 and 16, we need not consider the experimental data
in Tables 1-3 of the specification relied on by the appellants
for purposes of rebuttal.3
3We do, however, direct the examiner’s attention to the
statement in the Reply Brief that
[t]his is the first time that the Examiner has criticized
Appellant’s [sic, Appellants’] evidence in support of
patentability. This “sandbagging” approach to examination
is clearly improper, grossly unfair to Appellant [sic,
Appellants], and should not be tolerated.
We agree.
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