Appeal No. 96-0162
Application 08/030,806
In addition, in relying upon the 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. In re King, 801 F.2d 1324,
231 USPQ 136 (Fed. Cir. 1986); W. L. Gore & Associates, Inc.v.
Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983); In
re Oelrich, 666 F.2d 578, 212 USPQ 323 (CCPA 1981); In re
Wilding, 535 F.2d 631, 190 USPQ 59 (CCPA 1976); Hansgirg v.
Kemmer, 102 F.2d 212, 40 USPQ 665 (CCPA 1939).
The examiner has not provided any such technical
reasoning. As appellant’s reasoning appears to be sound and the
examiner has not explained how it is in error, we conclude that
the examiner has not discharged his initial burden and thus we
will not sustain this rejection as it is directed to claim 1 and
claims 2-6 and 18-21 dependent therefrom.
We turn next to the 102(b) rejection of claims 1, 7-12
and 14-17 as anticipated by Mayerjak. This rejection also rest
on the examiner’s findings of inherency in the Mayerjak reference
of a flex frame having a cross section of such dimension as to
meet the stiffness criteria recited in claim 1. The appellant
states in the specification that a Mayerjak flex frame which has
four legs of the same thickness with one set being longer than
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