Appeal No. 98-3354 Page 5
Application No. 08/427,743
water and that the weight causes the lure to sink in
water are therefore inherent in all of the claims.
[Page 6; footnote omitted.]
Having carefully considered the respective positions
advanced by the examiner and appellant we find ourselves to be
in substantial agreement with the appellant.
With respect to the examiner's position that the lure of
Guzik "inherently" has a "a flexible resilient soft body" which
would "deform" when the elastic members 28 and 60 are inserted
through the holes 24, 26, we have nothing in Guzik which would
reasonably support such a position. Guzik states that the
tubular body 12 may be formed "from a variety of appropriate
materials such as metal, plastic, or wood" (column 3, lines 18
and 19). Moreover, Guzik states that the hooks 20 and 22 are
attached to the tubular body 12 by screws (column 2, line 68)
and, additionally, states that the hooks may be attached "in
any other appropriate manner such as by an elongated through
bolt and nut, rivets spot welding, etc." (column 3, lines 2-4).
These teachings all suggest that the tubular body of Guzik is
relatively hard and rigid, not flexible, resilient and soft as
the examiner contends. Inherency may not be established by
probabilities or possibilities (see In re Oelrich, 666 F.2d
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