Appeal No. 96-3169 7
Application No. 08/271,273
that each of the process conditions required by the claimed subject matter may be
present in the disclosure of Willemse or
Volpenhein is not sufficient to establish inherency. See In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981); Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). Furthermore, the examiner must provide
some evidence or scientific reasoning that the presence of the “combined level of
difatty ketones and
$-ketoesters of about 300 ppm or less” characteristic is an inherent characteristic
of the prior art compositions. In the case before us, no such evidence or reasoning
has been set forth. Accordingly, the rejection of the examiner is reversed.
Because we reverse on this basis, we need not reach the issue of the
sufficiency of the showing of unexpected results. In re Geiger, 815 F.2d 686,
688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
DECISION
The rejection of claims 1 through 4, 7, 9, 11, and 13 through 23 under 35
U.S.C. § 103 as being unpatentable over Willemse is reversed.
The rejection of claims 1 through 4, 7, 9, 11, and 13 through 23 under 35
U.S.C. § 103 as being unpatentable over Volpenhein is reversed.
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