Appeal No. 1997-1863 Page 4
Application No. 08/408,087
When an examiner relies upon a 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 prior art.” Ex parte Levy, 17 USPQ2d 1461,
1464 (Bd. Pat. App. & Int. 1990). Inherency simply cannot be
established based on probabilities or possibilities. See In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
In the present case, the examiner has not met the heavy
burden of furnishing an adequate factual foundation and/or
technical reasoning to show that any of the polyester polyols,
reactant component (b), of Pedain necessarily corresponds to
the at least partly crystalline (crystallization of at least
30%) polyester polyol of appellant, let alone that any of the
particularly disclosed reaction products thereof (prepolymer)
inevitably corresponds to the polyurethane prepolymer
component of appellant's adhesive.
In this regard, the examiner has failed to cite any
compelling evidence which establishes that prepolymers within
the scope of the appealed claims are the necessary product of
the reaction disclosed by Pedain especially given that the
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