Appeal No. 1997-3643
Application No. 08/484,047
The Rejection over Savageau in view of Uhlemayr
Claims 1-14 are rejected by the examiner as being unpatentable over Savageau in view of
Uhlemayr. According to the examiner, Savageau suggests a printing ink having a binder formed of the
claimed proportions of a phenolic resin-modified rosin and an alkyd resin derived from an unsaturated
fatty acid, a polyol and a dicarboxylic acid. The examiner contends that the iodine value and hydroxyl
number of the linseed oil formed alkyd resin is inherent as these numbers are result oriented variables.
Yet, the examiner goes on to state that:
Moreover, the primary reference Savageau expressly teaches everything but the hydroxyl
number and conversely the acid number ... as claimed. The example of Savageau has a
hydroxyl number way to low based on a ratio of hydroxyl compound to acid compound. There
is no motivation directly in it or in [the] Ink Manual incorporated therein to raise the hydroxyl
number.” (Examiner’s answer, p. 5).
Furthermore, the examiner contends that such properties would have been obvious in view of Uhlemayr
which describes a hydroxyl value of about 35.
At the outset, 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. Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). Specifically, inherency may not be established
by probabilities or possibilities. The mere fact that a certain thing may result from a give set of
circumstances is not sufficient. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326, (CCPA
6
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