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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