Ex parte KAZUYA ONO et al. - Page 10

                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).                                                                                

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