Appeal No. 2004-0896
Application No. 09/751,774 Page 5
reproduced above, Soukal use the term “exchange of data” as that
term relates to operating or processing data (software).
Moreover, the examiner (answer, page 4) acknowledges that
applicants provide more detail in disclosing their system than
does Soukal. Consequently, the examiner has not shown that
Soukol describes a control and operating system identical with or
substantially the same as appellants’ system so as to support the
examiner’s position that operating Soukal’s system necessarily
results in steps being performed that correspond to the data
handling steps (d) through (h) of claim 1.2
The examiner, in relying on a theory of inherency, must
provide a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent
characteristics necessarily flow from the teachings of the
applied prior art. See In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999). The examiner has not
provided persuasive support for an inherency theory. Inherency
cannot be established based on conjecture and/or probabilities or
possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
2 The examiner additionally relies on Budd to show a
catheterization procedure. The examiner does not rely on Budd to
suggest appellants’ data processing method steps.
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