Ex parte MICHAEL E. MILLER et al. - Page 4

          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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