Appeal No. 1997-3282
Application No. 08/189,314
In our opinion, the examiner's position is totally
without support in the applied references and is entirely
based on speculation and conjecture. As previously discussed,
it is well settled that inherency may not be established by
probabilities or possibilities, but must instead be "the
natural result flowing from the operation as taught." See
Oelrich supra. In the present case, neither the Shibano
patent nor the examiner provides an adequate factual basis to
establish that the natural result flowing from the applied
patent would have been a polyolefin polymer having a CDBI of
greater than 70 percent as claimed by the appellant in claim
1.
Since the examiner has failed to provide sufficient
evidence supporting a conclusion that a person of ordinary
skill in the art would have known that the polyolefin polymers
of Shibano inherently had a CDBI of greater than 70 percent,
we find, the examiner's analysis of the collective teaching of
the prior art insufficient to satisfy the burden of presenting
a prima facie case of obviousness with respect to independent
claim 1 on appeal. That is, the examiner's analysis is
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