Appeal No. 1997-3093
Application 08/415,384
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections.
Rejection under 35 U.S.C. § 102(b)
The examiner argues that DeSimone’s process is
sufficiently similar to that of appellants that there is a
reasonable basis for believing that the product produced by
DeSimone’s process inherently has the characteristics recited
in appellants’ independent claims (answer, page 4).
When an examiner relies upon a theory of inherency, “the
examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990). Inherency “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.” Ex parte Skinner, 2 USPQ2d
-3-3
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