Appeal No. 95-0442
Application 08/026,183
If the examiner considers penetrability which is sufficient
for impregnating rotor coil windings to be an inherent
characteristic of Yamamoto’s phenoxy resin-containing
composition, then “the examiner must provide 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 applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990).
Inherency “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.” Ex parte
Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986).
The examiner has not provided an explanation supported by
evidence or technical reasoning as to why appellants’ claims
encompass a composition which includes Yamamoto’s phenolic
resin. Accordingly, we conclude that the examiner has not2
carried his burden of establishing a prima facie case of
obviousness of appellants’ claimed invention.
2The Kaufman reference was relied upon by the examiner
solely for the purpose of providing motivation to use a
combination of curing agents (answer, page 4).
-10-10
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