Appeal No. 2002-0741
Application No. 08/935,348
reasonableness of the examiner’s belief that the property in
question is indeed an inherent characteristic of the prior art.
In the present case, no such evidence or convincing reasoning has
been set forth by the examiner. Absent such evidence or
reasoning on the part of the examiner as to why the properties
set forth in paragraph (c) of claim 1 flow as a natural result
from the adhesive disclosed by Zacharias PCT ‘238, we are
constrained to conclude that the examiner has not made out a
prima facie case of anticipation. See In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323 326 (CCPA 1981) (the mere fact that a
certain thing may result from a given set of circumstances is not
sufficient to establish inherency).
In light of the above, the standing rejection of claims 1
and 4-6 and 8-12 as being anticipated by Zacharias PCT ‘238 will
not be sustained.
Rejection (e): the rejection of claims 1, 2, 4-6 and 8-12 under
35 U.S.C. § 103(a)
Claims 1, 2, 4-6 and 8-12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zacharias PCT ‘238 in view of
Paul.
For the reasons discussed above in our treatment of the
examiner’s anticipation rejection of claims 1, 4-6 and 8-12,
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