Appeal No. 2003-0130
Application 08/950,187
Claim 1 stands rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103 as
obvious over Twu.
Claims 1 and 3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Twu.
Claims 1 and 3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ishimaru.
OPINION
For the following reasons, we reverse each of the above-
mentioned rejections.
I. The rejection of claim 1 under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103 over Twu
We note that when an examiner relies upon a theory of
inherency, “the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Inherency “may not be established by
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).
Also, the burden is on the examiner to set forth a prima facie
case of obviousness or anticipation. See In re Alton, 76 F.3d
1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996); In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to the anticipation rejection, the examiner has
not met this burden for the following reasons.
On page 4 of the answer, the examiner acknowledges that Twu
does not explicitly disclose condition (2) and condition (5)
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