Appeal No. 1996-3806
Application 08/183,152
13), page 4).
The examiner apparently considers cubic carbides to
inherently be completely absent from Hale’s cubic phase
depleted surface layer. When an examiner relies upon a theory
of inherency, “the examiner must provide a basis in fact
and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior
art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Int. 1990). Inherency “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.” Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). The examiner does not
provide such reasoning. Instead, the examiner puts the
initial burden on appellant to prove that no cubic carbides
are present in the Hales’ cubic phase depleted layer. This is
improper, because it is the examiner who has the initial
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