Appeal No. 96-2341
Application 08/389,554
thinnable (brief, page 10). Appellants argue that to arrive5
at their claimed invention from Wilkins, it is necessary to
pick and choose from Wilkins based on appellants’ disclosure
(brief, page 11).
The examiner argues that it would have been obvious to
one of ordinary skill in the art to select colloidal alumina
from among Wilkins’ disclosed thickening agents (answer, page
6), but does not argue that any further modification would be
needed to produce appellants’ composition. The examiner
also argues that Wilkins’ materials are the same as those of
appellants and that, therefore, Wilkins’ composition has the
same properties as appellants’ composition (answer, pages 13-
14).
Thus, it appears that the examiner’s position is that
when Wilkins’ thickener is colloidal alumina, the composition
inherently is shear thinnable.
When an examiner relies upon a theory of inherency, “the
examiner must provide a basis in fact and/or technical
5 The examiner does not respond to this argument.
11
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