Appeal No. 2002-0404
Application No. 08/859,143
Erpenbach et al. and the Aldrich references is just as pure or
even more pure than Appellants’ claimed butyl acrylate product
since both references disclose a purity greater than 99.8%.”
(Id. at pages 8-9.)
The examiner’s position is without merit, because the
examiner has not identified any evidence or reasoning to
establish that a butyl acrylate product having a purity greater
than 99.8% will necessarily or inherently have the recited butyl
ether/butyl acetate purity levels. In this regard, it is well
settled that inherency cannot be established by mere
possibilities or probabilities. 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).
Summary
In summary, our disposition of this appeal is as follows:
the rejection under 35 U.S.C. § 103(a) of claims 1 through
17 as unpatentable over Dougherty in view of Erpenbach is
reversed;
the rejection under 35 U.S.C. § 103(a) of claims 11 through
17 as unpatentable over Aldrich is reversed.
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