Appeal No. 2006-1820
Application No. 08/889,440
1949, 1950-51 (Fed. Cir. 1999) citing Continental Can Co. v. Monsanto Co., 948 F.3d 1264,
1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). Inherency, however, 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. Id. At 1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981). When the examiner’s allegation of “inherency” is
challenged by appellants, as it was here, the examiner is put to his/her proof to offer some
evidence to show the truth of that allegation. Yet, even though appellants have challenged the
examiner’s assertions of inherency, as to the kinetic condition setting unit and the particle
motion computing unit, the examiner has offered nothing except more of the same allegations of
“inherency.” For example, at page 32 of the answer, in response to appellants’ challenge, the
examiner asserts that, with regard to a particle source for particle simulation, he “is at odds to
think of how such a simulation could be carried out without specifying a source. The particles
must be accounted for at all times in their trajectories, including initial conditions.”
If the examiner is so hard pressed to think of how the simulation can be carried out
without specifying a source, then the examiner should have had no difficulty in offering some
concrete evidence showing such simulations with a specified source. Instead of getting into an
argument with appellants as to whether appellants earlier acquiesced in these assertions of
“inherency” and whether appellants should be permitted, this late in the prosecution, to challenge
the assertion of inherency (bottom of page 22 of the answer), the examiner’s time would have
been better spent by merely offering the concrete evidence to support these inherency
allegations. We find no such evidence.
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