Appeal No. 1999-0610 Page 14
Application No. 08/601,186
contends that, since the coating comprises a heparin-PTC
complex, which includes a polysaccharide-based polymer, the
coating structure meets the appellants' claims and, thus, must
inherently meet appellants' functionality, namely
lubriciousness (answer, page 7).
Appellants do not appear to challenge the sufficiency of
the references to suggest the proposed modification of
Castillo to coat the distal end thereof with a coating as
disclosed by Eury. Rather, appellants' arguments are directed
to the issue of whether the coating taught by Eury is
"lubricious" as claimed (brief, pages 6 and 7).
When relying upon 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 In re King, 801 F.2d 1324,
<jump>, 231 USPQ 136, 138 (Fed. Cir. 1986); Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990). Further, under
principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the
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