Appeal No. 1998-2471 Page 10
Application No. 08/222,913
reconstruction to supply deficiencies in its factual basis.”
Id., 379 F.2d at 1017, 154 USPQ at 178. When relying on
inherency, moreover, an examiner must provide a basis in fact
or technical reasoning to reasonably support a determination
that an 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).
Here, the examiner admits, “Italiano does not disclose an
electrical resistance of the liquid being greater than that of
the ink, the ink is conductive ....” (Examiner’s Answer at
4.) Attempting to overcome the deficiency, she alleges, “the
liquid and the ink each inherently possesses electrical
resistance of such claimed relationship in order for the
liquid to float on top of the ink.” (Id. at 12.) The
examiner fails to provide a factual basis or technical
reasoning, however, to reasonably support a determination that
the resistance of the indicating liquid being greater than
that of the ink necessarily flows from the teachings of
Italiano. As noted by the appellants, “Italiano does not
disclose, either specifically or inherently, the value of the
two liquids as to their resistance values.” (Appeal Br. at
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007