Appeal No. 1997-3520
Application No. 08/357,487
fatal flaw in the examiner's rejection is that the examiner
fails to lend factual support to the ultimate conclusion of
inherency. It is well settled that a determination of
inherency cannot be established by probabilities or
possibilities, but that it is incumbent upon the examiner to
establish the inevitability of the inherency which is
propounded. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981); In re Wilding, 535 F.2d 631, 635-36, 190 USPQ
59, 63-64 (CCPA 1976). The examiner's reference to the
dimensions or thickness of Newsome's test samples is bare
speculation.
In some instances it is appropriate for an examiner to
reject a claimed article on the principle of inherency when it
can be demonstrated that there is a substantial correspondence
between the methods of making the claimed article and the
article of the prior art. However, in the present case, the
examiner has not attempted to draw any such correspondence
between appellants' method of making the claimed heat-
shrinkable film and the method disclosed by Newsome.
Significantly, appellants disclose that the claimed film is
prepared by heating the film obtained by the known extrusion
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