Appeal No. 1999-1390
Application No. 08/655,783
Although Endmann teaches the production of polyurethanes by
performing the reaction in two serially arranged static mixers
(translation, page 4), we agree with the appellants' analysis
and conclusion (appeal brief, pages 3-4; reply brief, page 2)
that the examiner has not established a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984).
As admitted by the examiner (answer, page 4), Endmann does
not describe any shear rates for the mixers, much less the
specific shear rates recited in the appealed claims. While the
examiner alleges that the recited shear rates would be inherent
in the prior art process, it is well settled that inherency
cannot be established by mere possibilities or probabilities.2
In this regard, the examiner has not established that the
residence times, flow velocities, and length to diameter (L/D)
ratios described in Endmann for the premixer and the second
static mixer (translation, pages 7-10) would necessarily
correlate to the shear rates recited in the appealed claims.
2 See Mehl/Biophile Int=l Corp. v. Milgraum, 192 F.3d 1362,
1365, 52 USPQ2d 1303, 1305 (Fed. Cir. 1999); In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); Hansgirg v.
Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939).
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