Appeal No. 97-2999 Page 14
Application No. 08/338,714
radially outwardly as the flange 29 moves onto larger diameter
portions of the ball 20.
When 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. See Ex parte Levy, 17 USPQ2d 1461,
1464 (Bd. Patent App. & Int. 1990). The mere fact that a
certain thing may result from a given set of circumstances is
not sufficient. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). We are mindful that there is a line of
cases represented by In re Swinehart, 439 F.2d 210, 169 USPQ
226 (CCPA 1971) which indicates that where an examiner has
reason to believe that a functional limitation asserted to be
critical in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, the examiner
possesses the authority to require an applicant to prove that
the subject matter shown to be in the prior art does not
possess the characteristic relied on. Nevertheless, before an
applicant can be put to this burdensome task, the examiner
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