Appeal No. 1996-3472
Application 08/192,088
disclosure or teaching in Clark of a sol-gel alumina abrasive
grain.
Regarding the examiner’s position that appellants have
not shown that Clark does not inherently possess the
properties of the claimed composite (Answer, page 4), we have
discussed above that any such initial burden is born by the
examiner. See Oetiker, supra. The examiner, if relying on a
theory of inherency, must provide a basis in fact and/or
technical reasoning to reasonably support the determination
that the allegedly inherent characteristics necessarily flow
from the teachings of the applied prior art. In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
On this record, the examiner has not provided any such support
for an inherency theory.
For the foregoing reasons, we determine that the examiner
has not shown that all of the claimed limitations are
described in Clark within the meaning of 35 U.S.C. § 102(b).
Accordingly, the rejection of the claims on appeal under 35
U.S.C. § 102 (b) is reversed.
The only statement the examiner has made regarding
obviousness is that “[u]se of sol-gel grains if the process
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