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). 4Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007