Appeal No. 1997-1423
Application No. 08/421,025
there is no express indication in Reed that these prior art
polyester particles possess any adhesive properties.
Here, we further observe that because there is a paucity
of detailed and specific disclosures regarding the low
molecular weight linear polyester particles of Reed, a
comparative factual analysis between the claimed “adhesive-
abrasive” particle components and the Reed particles, such as
made in In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990), cannot be undertaken. Inherency is a
question of fact and cannot be established by probabilities or
possibilities. In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). While it may be possible that the low
molecular weight linear polyester particles of Reed possess
some degree of adhesiveness when melted, that “possibility” is
not sufficient to establish a prima facie case that such
particles are “adhesive-abrasive” particles within the meaning
of the claim language in question. Accordingly, even if we
agreed with the examiner that a person of ordinary skill in
this art would have been motivated by Reed’s disclosure (that 1
1See Reed at column 7, lines 16-21.
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