Appeal No. 1999-2329
Application 08/642,278
steel,” whereas, “heat set” means “to fix (as a plastic or4
pleats in fabric) in a permanent form through the action of
heat.”5
In making a rejection on the ground that claimed subject
matter would inherently be present in the apparatus or process
described by a reference, the examiner bears the initial
burden of making out a prima facie case, as by providing a
basis in fact and/or technical reasoning which reasonably
supports the position that what is allegedly inherent would
necessarily flow from the teachings of the prior art. Behr v.
Talbott, 27 USPQ2d 1401, 1407-08 (BPAI 1992). In the present
case, we do not consider that the examiner has met that
burden. On page 4, the examiner states that in Fanselow, “the
tubing is quenched or heat set after orientation ‘to congeal
them into a [sic] solid multilayer tubing’ in order to
maintain the oriented diameter during use of the tubing.”
However, the quoted “to congeal” passage from Fanselow, which
appears at col. 12, line 58, is taken from a sentence which
4Hackh’s Chemical Dictionary, 4th Ed., p. 562.
5Webster’s Third New International Dictionary, p. 1046.
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