Ex parte JEZEQUEL et al. - Page 4




          Appeal No. 1997-1663                                       Page 4           
          Application No. 08/448,053                                                  


          the 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.              
          “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).                                                                 
               The inquiry as to whether a particular reference                       
          anticipates a particular claim must focus on what subject                   
          matter is encompassed by the claim and what subject matter is               
          described by the reference.  Here, in maintaining the stated               
          102 rejections, the examiner makes reference to drawing                     
          figures 5(b), 7, 9, 10, and 11(a)-(d) of Saitou, drawing                    
          figure 1 and the claims of Saito, drawing figure 2 and the                  
          claims of Mumaw and the drawing figures and claims of Frame                 
          (answer, page 4).                                                           
               However, the examiner has not furnished an acceptable                  
          explanation as to how each of the above noted portions of the               








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