Appeal 2006-3302]
Application 10/153,865
Inherency cannot be established based on conjecture and/or
probabilities or possibilities. See In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981); Ex parte Skinner, 2 USPQ2d 1788,
1788-1789 (Bd. Pat. App. & Int. 1986). Here, the Examiner has not
provided persuasive support for an inherency theory.
Concerning the obviousness prong of the Examiner’s rejection, the
Examiner further contends that “all of the above-mentioned variables are
indeed known in the art of heat treatment of steel, and the effects of varying
one or more of those variables in treating a given piece of steel are generally
known in the metallurgical arts. One skilled in the heat treatment art would
easily be able to adjust these variables to achieve a hardness as presently
claimed (HRC of 45 or more) in the steel pipes as disclosed by Ono”
(Answer 5). However, as articulated by Appellants, “Ono, though, does not
disclose, teach, or suggest any information relating to the heating and
cooling processes recited in column 6, lines 16-21” (Br. 7). Thus, the
Examiner has merely identified an alleged capability in the art. The
Examiner has not, however, identified any suggestion arising from the four
corners of the applied reference or from that alleged ordinary skill that
would have led one of ordinary skill in the art toward the claimed subject
matter, much less to a product corresponding to all of the limitations of
claim 1 based on the general steel pipe formation teachings of Ono (see, e.g.,
Reply Br. 3-5). After all, 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).
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