Appeal No. 1996-2123
Application No. 08/069,458
It appears that the examiner is attempting to invoke the principles of In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433 (CCPA 1977). When a composition is claimed in terms of a function, property
or characteristic and the prior art composition is the same as the claimed composition except the function
is not explicitly disclosed, the Examiner may make a rejection under both 35 U.S.C. ' 102 and ' 103,
expressed as a '' 102/103 rejection. AInherency, 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.@ In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). The examiner must
provide rationale or evidence tending to show inherency. It is also incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness when rejecting claims under 35
U.S.C. ' 103. In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Claims 49-54 are directed to A[a] biologically pure strain of Acetobacter and progeny thereof.@
The claimed strains of Acetobacter are characterized in two ways, they must:
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