Appeal No. 1998-2257
Application 08/692,310
inherently have the same characteristics regardless of how
they are made. When an examiner relies upon a theory of
inherency, however, “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 not provided such a basis
in fact and/or reasoning in support of his argument.4
For the above reasons we reverse the examiner’s
rejections over Ballas in view of Nakajima, Sinfelt in view of
Nakajima, Goretta in view of Nakajima, Bogdanovic in view of
Sedlak and Nakajima, Bushy in view of Nakajima, and McCormick
in view of Nakajima.
4 The rejection over McCormick further is improper because
this reference is not prior art.
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