Appeal No. 95-1195
Application No. 08/102,674
recognizes that Lancsek does not disclose the claimed
preliminary heat-treating step. However, it is the examiner's
position that it would have been obvious for one of ordinary
skill in the art to form the metal article of Lancsek by
molding, and that such molding would inherently involve the
claimed preliminary heat treatment. The flaw in the
examiner's reasoning is that a determination of inherency
cannot be established by probabilities or possibilities, but
it is incumbent upon the examiner to establish the
inevitability of the inherency based upon factual evidence or
persuasive scientific reasoning. See In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981), and In re Wilding,
535 F.2d 631, 635-36, 190 USPQ 59, 63-64 (CCPA 1976). In the
present case, the examiner has not advanced the requisite
factual evidence or persuasive scientific reasoning that the
use of molding to form the metal part of Lancsek would
inevitably include a heat treatment that is equivalent to the
claimed preliminary heat treatment of a molded metal article
which is thereafter conformed to a dimension. Also, the
examiner has not established on this record that a molded
metal article obvious from Lancsek would have the same
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