Appeal No. 96-3426
Application No. 08/115,274
the emulsion prepared in the references of record would remove
either tetraethyl lead or bromobutane.
It is the examiner’s position, with respect to tetraethyl
lead and bromobutane, that “these compounds would be present
in at least some degree in contaminated soil in view of the
long use of tetraethyl lead as an antiknock/octane enhancer
booster in gasoline.” See Answer, paragraph bridging pages 5
and 6. We disagree. Inherency requires that the
characteristic must necessarily be present. It may not be
established by probabilities or possibilities. The mere fact
that tetraethyl lead may be present in gasoline contaminated
soil is not sufficient. See In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981); Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). The examiner must
provide some evidence or scientific reasoning that the
presence of tetraethyl lead is an inherent characteristic of
the prior art composition. In the case before us no such
evidence or reasoning has been set forth.
Furthermore, appellants in referring to the statement in
the Answer above have argued that, “[t]his statement is
unsupported by Lahoda or conventional practice as of the
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