Appeal No. 1999-1461
Application No. 08/812,916
the addition of the polybutene resin, and cross linking would
continue [to] occur since the polybutene materials are kneaded
together with the partially cross linked elastomer and
polypropylene in the molten state” (answer, page 7). In
essence, it is the examiner’s basic contention that some
degree of crosslinking would inherently occur between the
appellants’ claimed polybutene-1 resin of component (B) and
the partially crosslinked thermoplastic elastomer of component
(A). However, in relying upon an inherency theory, the
examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily is produced. Ex
parte Levy, 17 USPQ2d 1461, 1463-1464 (Bd. Pat. App. & Int.
1990). Here, the examiner has proffered no such basis in
support of his contention. Therefore, the contention must be
regarded as unpersuasive. Correspondingly, it was
unreasonable and inappropriate for the examiner to require
that the appellants “come forth with probative evidence that .
. . supports their premise the materials taught by Yonekura .
. . are materially different from those claimed by the
appellants” (answer, page 7).
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