Appeal No. 1996-3350
Application 08/187,114
(column 6, lines 1-8). However, to establish that the claimed
properties are inherent to the sleeve of Clabburn, the
examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent properties necessarily flow from the
teachings of the applied prior art. Inherency may not be
established by probabilities or possibilities. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999); In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981). On this record, the examiner has not
established that the claimed properties would necessarily be
present in the sleeve of Clabburn.
However, Clabburn teaches that the “elasticity of the
article” is critical to enable it to conform closely to the
contours of the electrical apparatus (column 3, lines 53-54).
Clabburn also teaches that when the elastomeric tubular
article is “held-out” in a stretched state, the elastic
stresses released by removing the support urge the tubular
7
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