Appeal No. 96-1834
Application 08/046,945
Despujols or Portier [sic, Poirier] by eliminating of
[sic] the door support members and the support for the
doors therewith is an obvious matter of design choice
for one having an [sic] ordinary skill in the art.
[Final rejection, page 2; footnote added.]
In support of this position the answer states that:
The claimed method is inherent to the assembly of the
closets of the cited references. Whether the method is
specifically recited cannot be readily determined since
the references are foreign language documents. The
appellant has not provided evidence that the method of
assembly of the cited references is anything other than
the method recited in the appellant[’s] claim. [Page
3.]
We will not support the examiner’s position. Even if we
were to agree with the examiner that the elimination of the door
support members and their function in the wardrobes or suitcases
of Despujols and Poirier would have been obvious, we cannot agree
that there is a reasonable basis to conclude that the steps of
assembly and disassembly specifically recited in claim 1 are
“inherent” in these references as the examiner contends. When
relying upon the theory of inherency, the examiner has the
initial burden of establishing 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 prior art. Ex parte Levy, 17 USPQ2d 1461, 1464
(Bd. Pat. App. & Int. 1990).
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