Appeal No. 95-0112
Application 07/787,994
agree and caution the examiner that inherency must be based on
inevitability, not speculation. In re Oelrich, 666 F.2d 578,
581-582, 212 USPQ 323, 326 (CCPA 1981). Since the examiner has
not given any reasons as to why the teachings of Giessen would
have suggested the components, conditions and resultant
superplastic steel as described in claim 1, we find the
examiner’s conclusion that the “superplastic property would have
been inherent” to be based on speculation.5
Accordingly, the decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge)
5 Answer, p. 5, para. 1.
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