Appeal No. 96-2383
Application 08/217,418
To sustain the examiner's rejection, we would need to
resort to speculation or unfounded assumptions to supply the
factual deficiencies in the record before us. This we decline
to do.
Note the guidance provided by In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968), reh'g denied, 390 U.S. 1000 (1968). Here, simply
put, more evidence is needed to convince us. To the extent
the examiner's position may be viewed as being based upon
inherency, inherency may not be established by probabilities
or possibilities since inherency requires a teaching must be
necessarily present in the applied prior art. Continental Can
Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749
(Fed. Cir. 1991) relying on In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981). These findings are consistent
with a more recent case from our reviewing court, In re
Robertson,
___ F.3d ___, 49 USPQ2d 1949 (Fed. Cir. 1999).
In view of the foregoing, the decisions of the examiner
rejecting various claims under 35 U.S.C. § 102 and § 103 are
reversed.
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007