Appeal No. 1997-0042
Application No. 07/992,177
the alkylene oxide group would have rendered the claimed
limitation obvious to one of ordinary skill in the art. If
the examiner is relying on a theory of “inherency,” the
examiner must provide basis in fact and/or technical reasoning
to reasonably support the determination that the allegedly
inherent characteristic necessarily flows from the teachings
of the prior art. “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). See also In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999).
Appellants have also presented evidence to show that the
claimed subject matter possesses unexpectedly improved
properties (Brief, pages 11-18, discussing the Declarations
under 37 CFR
§ 1.132 filed by Tatsumi, executed on Oct. 8, 1993, and filed
by Namiki et al. (Namiki), executed on Oct. 26, 1994).
Contrary to the examiner’s assertion on page 6 of the Answer,
the Namiki Declaration compares the closest prior art (see
Example 15 of Sasaki, the only example with a monomethyl
5
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