Appeal No. 1997-2194 Page 15
Application No. 08/195,018
When relying upon 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. See Ex parte Levy, 17 USPQ2d 1461,
1464 (Bd. Patent App. & Int. 1990). Here, the examiner has
not meet this burden. While both Sacherer and the appellants
make their separating element from cardboard, the appellants
teach (specification, p. 12) that the cardboard is coated to
ensure that the separating element is water repellant. Since
Sacherer's cardboard disc (10) has no need to be water
repellant and is not coated, we fail to see that the claimed
specific surface tension range (i.e., a surface tension for
wetting which is smaller than 70 mN/m) would be inherently met
by Sacherer's cardboard disc (10).
For the reasons set forth above, the examiner has failed
to establish the obviousness under 35 U.S.C. § 103 of the
subject matter of claims 1 to 3, 6 and 7. Accordingly, the
decision of the examiner to reject claims 1 to 3, 6 and 7
under 35 U.S.C.
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