Appeal No. 1998-2325
Application 08/484,114
initial burden of providing evidence or technical reasoning which
shows that the sintered oxide produced by Iwahara’s process is a
multi-phase mixture, and the examiner has not carried this
burden. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136,
138-39 (Fed. Cir. 1986).
The examiner interprets the term “phase” broadly as
encompassing any distinct and separate portion of a heterogeneous
mixture, and argues that the appellants have the burden of
demonstrating that Iwahara’s membrane is not a multi-phase
mixture (answer, page 5). The examiner, in effect, is arguing
that Iwahara’s sintered oxide inherently is a multi-phase
mixture. 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
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