Appeal No. 95-2165 Page 8
Application
characteristics and the adhesive is curable without the
applicant of supplemental heat. Based on the above construction
of the claimed subject matter, we find that Cohen discloses the
requisite components and characteristics of claim 1. Based upon
the above considerations the rejection of claim 1 is sustained.
However, as to claim 10 which requires,“a solubility
parameter from about 17.5 MPA to about 22.5 MPA , the½ ½ ”
examiner’s mere presumption that the plasticizers of Cohen have
solubility parameters within the claimed range constitutes
insufficient evidence to establish a prima facie case of
anticipation. To establish a prima facie case of anticipation
based on inherency, it must be shown that the solubility
parameter values are inherently possessed by Cohen’s
plasticizers. On the record before us, there is no evidence to
support the examiner’s position. See In re King 801 F.2d 1324,
1327, 231 USPQ 136, 138-139 (Fed. Cir. 1986); In re Best 562
F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Accordingly,
the rejection of claim 10 is not sustained.
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