Appeal No. 1996-1240
Application 08/044,961
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).
The examiner argues that it is reasonable to conclude
that as the temperature rises in the Pinckard method, the
dominant species, which Pinckard states are Actinomycetes and
Pseudomonas
(col. 5, lines 38-40), will be thermophiles which, the
examiner asserts, have an incubation temperature of 50-60EC
(answer, page 4). This argument is not persuasive because the
examiner has provided no evidence or technical reasoning which
shows that the temperature in Pinckard’s method increases to
50-60EC. The examiner merely provides speculation, and such
speculation is not a sufficient basis for a prima facie case
of obviousness. See In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968);
In re Sporck, 301 F.2d 686, 690, 133 USPQ 360, 364 (CCPA
5
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