Appeal No. 97/1235
Application No. 08/316,717
been prima facie obvious, the applied prior art provides no
evidentiary basis for a conclusion that appellants' claimed
humidity range was prima facie obvious at the time the
invention was made. The examiner's assertion that the claimed
humidity range in the outer container falls within the ambient
humidity range of normal atmospheric humidity and would occur
inherently in a container closed under such an atmosphere is
suspect for two reasons.
First, closure of the package under ambient conditions
would not necessarily result in a package with the attributes
claimed by appellants. In actuality, the range of normal
atmospheric humidity is much greater than that claimed by
appellants. This is significant, inasmuch as the case law
requires an inevitability or necessity for the establishment
of an inherency. See, for example, In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981).
Secondly, there is no reasonable basis for the examiner
to assume that any package such as the prior art package of
Phillips was, indeed closed under ambient conditions. For
example, it might be just as likely that a prior art package
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