Page 6
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re
Okuzawa,
537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976).
Our construction of the subject matter defined by appellants’ claim 43 is that
o
the claimed subject matter is directed to a surface which has been preheated to 40 C
at the time of coating application. This interpretation is consistent with appellants’
explicit statement at oral hearing, the Reply Brief and is in accordance with the
disclosure of the specification, page 8, Examples 1, 3 and 5 and Comparative Example
2.
The examiner further argues that where a recoating step is being effectuated,
the temperature of the reactor would be essentially identical to that of the claimed
subject matter. Answer, page 4. Stated otherwise, the examiner argues that the
o
surface to be recoated retains a temperature of 40 C or greater as a result of
previous polymerization reactions. However, no such teaching, disclosure or
suggestion is found in any of the references of record.
Inherency requires that the characteristic must necessarily be present. It may
not be established by probabilities or possibilities. Hence, the mere possibility that
o
the inner wall surfaces of a polymerization tank may be at a temperature of 40 C or
greater at the time the coating fluid is applied is not sufficient to establish inherency.
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 a
o
temperature of 40 C or greater is an inherent characteristic of the prior art
process. In the case before us, no such evidence or reasoning has been set forth.
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