subject matter. Although relaxivity may inherently be present, provided that all
other limitations are also present, inherency requires that the characteristic must
necessarily be present. It may not be established by probabilities or possibilities.
Hence, the mere possibility that polymethacrylic acid or polyacrylic acid may be
present in the disclosure of Pilgrimm is not sufficient to establish inherency. See In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); Ex parte
Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). Furthermore, the
examiner must provide some evidence or scientific reasoning that the presence of the
“relaxivity” characteristic is an inherent characteristic of the prior art compositions.
In the case before us no such evidence or reasoning has been set forth.
Accordingly, the rejection of the examiner is reversed.
DECISION
The rejection of claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Klaveness, Pilgrimm and Groman is reversed.
The decision of the examiner is reversed.
REVERSED
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