Appeal No. 2000-0526
Application No. 08/818,958
Inherency, however, 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.
We see nothing in the teachings of Farris I that the air
trap can be positioned in "various" locations which would
necessarily result in placement of the gas chamber on the rear
wall of the syringe and thus conclude that the examiner has
failed to meet the initial burden of establishing a prima
facie case of anticipation based upon the theory of inherency.
See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). Accordingly, we shall not sustain the
examiner's rejection of claim 1, or claims 4-8 which depend
therefrom, as being anticipated by Farris I.
Turning next to the examiner's alternative rejection of
claims 1 and 4-8 as being unpatentable over Farris I, the
examiner contends that it would have been an obvious design
alternative to one of ordinary skill in the art to move the
air trap to the rear wall based on the statement that the air
trap can be positioned in various locations and have various
shapes since this position will not compromise the intent of
the syringe at all and since the syringe will be needed to be
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