Appeal No. 96-2294
Application 08/278,558
inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the alleged inherent characteristic necessarily flows from the
teachings of the applied prior art. See In re King, 801 F.2d
1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
With regard to claim 1, we are of the view that the examiner
has not provided factual evidence or technical reasoning to show
that the arcuate connecting region in Figure 14 of Hayafuji
necessarily has the characteristic of a hinge portion. In a
situation such as this wherein there is a mere possibility that
the prior art reference functions as claimed, the examiner has
not discharged his or her initial burden of proving inherency.
Furthermore, with respect to claim 1, we note that it is
altogether unclear from the Hayafuji reference and particularly
Figure 14, which the examiner references, as to whether the
smallest width (as defined by appellant in the claim) of the bow
tie openings 180a is less than the length (as defined by
appellant in the claim) of the cutting head, i.e., the first
annular portion on the inner cannula of Hayafuji. This is one of
appellant’s argued differences in the appeal brief, and it is not
addressed at all by the examiner in the examiner’s answer. It is
our determination that there is little evidence this claimed
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