Appeal No. 1996-1568
Application No. 08/235,235
controlled as a consequence of the selected heat treatment
conditions. We perceive nothing indefinite in this regard.
As for the § 103 rejection, it is the examiner’s basic
position that the method of Jones would inherently achieve the
calcining, heat treating and resistivity increasing desiderata
of the appealed claims. From our perspective, however, the
examiner has failed to provide the requisite evidence or
scientific reasoning to establish the reasonableness of his
inherency position. Ex parte Skinner, 2 USPQ2d 1788, 1789
(Bd. Pat. App.
& Int. 1986). Certainly, the mere fact that Jones’ process
may employ temperatures which fall within the heat treatment
temperatures envisioned by the appellants is alone
insufficient to establish that the glass diffusion and
concomitant resistivity increase of the appealed claims will
necessarily and inevitably occur in practicing the prior art
process of Jones as required under the principles of
inherency.
In this latter regard, we remind the examiner that
inherency may not be established by probabilities or
possibilities. The mere fact that a certain thing may result
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