Appeal No. 1997-3264
Application 08/501,769
within the sheeted topfilms [sic, topfilm]” (answer, page 4).
The examiner points out that the claims do not require any
particular amount of tensioning or require that the tensioning
is applied in a controlled manner (answer, pages 7-8).
The examiner’s position, as indicated by the arguments
referred to above, is that some tensioning of Valimont’s upper
glass sheet is an inherent characteristic of the suspension of
the upper glass sheet using vacuum cups.
When an examiner relies upon a theory of inherency, “the
examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990). Inherency “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.” Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986).
The examiner has provided no basis in fact and/or
technical reasoning in support of his inherency argument and,
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