Appeal No. 94-0822
Application No. 07/801,992
examiner to establish the inevitability of the inherency which
he propounds by advancing the appropriate objective evidence
or persuasive scientific reasoning. In re Wilding, 535 F.2d
631, 635-36,
190 USPQ 59, 63-64 (CCPA 1976). When the prior art is silent
regarding a property or characteristic of a claimed product,
the examiner must demonstrate that the claimed product
reasonably appears to be essentially the same as the product
disclosed in the prior art. In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In the present
case, we are not satisfied that the examiner has demonstrated
a sufficiently close correspondence between the processes of
the prior art and appellants' process of preparing an aqueous
dispersion such that it is reasonable to conclude that the
dispersions of the prior art must, of necessity, or
inherently, comprise composite particles of the claimed
structure. Rather, we concur with appellants that the
examiner's conclusion is based upon the type of speculation
that cannot form the basis of a rejection under 35 U.S.C. §§
-5-
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