Appeal No. 1997-2512
Application No. 08/118,905
because the air does not penetrate from outside the sealed tube, which includes
squeezing bulb 22.
With respect to the examiner’s comment regarding inherency, a rejection based on
a theory of inherency is not appropriate unless there is sufficient factual basis or sound
technical reasoning to support such a theory. Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991); In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981); Ex parte Levy, 17 USPQ 1461, 1464 (Bd.
Pat. App. & Inter. 1990). Here, the examiner has not adduced any such factual basis or
sound technical reasoning.
In the sentence bridging pages 7 and 8 of the Answer, the examiner alleges that the
“[a]ppellants’ use of a plunger to expel the substance from the device is the same function
as the rubber bulb [sic], i.e. to expel the substance from the tube or device.” However, the
use of a plunger to expel the material, as described in the appellants’ specification at page
4, lines 1-4, occurs after cutting (i.e., penetrating) the tube above or through a plug. In
Whittaker, there is no penetration step. At best, Whittaker only discloses expulsion, which
is auxiliary or alternative to the appellants’ two-step penetration of the sealed tube to
release the material. See page 3, lines 19-21, page 3, line 28 to page 4, line 4, and page
5, line 28 to page 6, line 3 of the appellants’ specification.
Under these circumstances, we hold that Whittaker’s delivery method does not
meet the claim elements “by penetrating the sealed tube at its lower section, followed by
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