Appeal No. 97-2421
Application 08/202,411
This is the first time the examiner has explained why he considers the lowering speed to be slower
than the raising speed in Carteau and thus the reasoning is not addressed by appellants.
Carteau does not describe the unloading (retracting) operation except to say that the cam
follower sequentially follows along the cam profile CB, BA, AA' in a direction reverse to the loading
(lowering) operation (e.g., column 3, lines 21-28; column 8, lines 11-17). Carteau discusses the
speed of loading, but not the speed of unloading or the relative speeds of loading and unloading.
While it seems logical that unloading could be carried out faster than loading since there is no danger
of a head crash, and since it is unnecessary to slow the cam follower P at the breakpoints, it is
impermissible to make such guesses in an anticipation rejection. "Inherency, however, may not be
established by probabilities or possibilities." In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981). Something is not inherent even when it may be only one of a small number of
alternatives. It is improper to resort to speculation or unfounded assumptions to supply deficiencies
in the factual basis for a rejection. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967). We have considered the examiner's arguments regarding figures 5A-5C, but find these figures
directed solely to the loading operation. We find nothing in Carteau which reasonably suggests that
the raising operation is inherently faster than the lowering operation. Accordingly, the anticipation
rejection of claim 17 and dependent claims 18-19 and 23 is reversed. The examiner has not presented
a backup obviousness rejection of claim 17.
Appellants argue in the brief that the "control means" and the "raising and lowering means"
are in means-plus-function language under 35 U.S.C. § 112, sixth paragraph, and Carteau "does not
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