Appeal No. 98-3354 Page 6
Application No. 08/427,743
578, 581, 212 USPQ 323, 326 (CCPA 1981) and In re Rijckaert, 9
F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993)) and,
when relying on the 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 (see Ex parte Levy, 17 USPQ2d 1461, 1464
(Bd. Pat. App. & Int. 1990)). Here, we do not find the
examiner has discharged that initial burden.
With respect to the examiner's position that the member 60
of Guzik can be considered as a "weight," we are of the opinion
that the examiner is attempting to expand the meaning of this
term beyond all reason. According to the appellant's
specification:
The weight means 10, 47, 56, and 61 may be made
from any convenient material, but preferably will be
a metal such as lead, stainless steel, aluminum
copper, or alloys of such metals. One of the
advantages of this invention is that the action of a
lure may be changed by changing the size and/or the
material of the weight means inserted into the lure
body cavity. For example, a fisherman may begin
fishing with a lure as shown in FIG. 12 using a
weight 61 made from aluminum. If the fisherman
determines that the lure does not sink to a
sufficient depth, the fisherman may stretch the
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