Appeal No. 96-1770
Application No. 08/296,307
are the same, the results must inherently be the same. In re
Sussman, 141 F.2d 267, 269-70, 60 USPQ 538, 540-41 (CCPA
1944); Ex parte Marhold, 231 USPQ 904, 905 (Bd. Pat. App. &
Int. 1986) (Since the steps are the same, the results must
inherently be the same unless they are due to conditions not
recited in the claims).
Appellants argue that Porter does not teach the method
steps for controlling the decomposition temperature and
percentage decomposition of organosilicon (Brief, page 6).
Appellants further argue that the examiner has ignored the
temperature and decomposition limitations of the claims
(Brief, page 12). The initial burden of establishing
unpatentability rests with the examiner. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
“Inherency, however, 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.
[Citations omitted].” In re Robertson, 169 F.3d 743, 745,
49 USPQ2d 1949, 1951 (Fed. Cir. 1999). In fact, the examiner
admits that Porter does not disclose that the decomposition
temperature of the organosilicon is reduced by the addition of
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