Appeal No. 95-2958
Application 08/108,570
recited in appellants’ claims (answer, page 5). In other
words, the examiner argues that production of at least one of
the products recited in appellants’ claims is an inherent
characteristic of the method recited in Minklei’s Example 2.
When an examiner relies upon a theory of inherency, “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).
Minklei teaches that the reactants in his method include
at least about 1 mole of chlorine for each 12 moles of
hydrogen fluoride and 2 moles of hexachlorobutadiene (col. 2,
lines 3-7). The examiner has provided no basis in fact or
technical reasoning to support his assertion that the reaction
of Minklei’s hydrogen fluoride and hexachlorobutadiene in the
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