Appeal No. 1997-4077
Application No. 08/441,989
the retainer 14. We also fail to find any teaching or
suggestion in Yamaji that the material used to make the gasket
and retainer
will tarnish or oxidize whereas the material used to make the
joint members will not. When relying upon the theory of
inherency, the examiner has the initial burden of establishing
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 prior art. See Ex
parte Levy, 17 USPQ2d 1461 (Bd. Pat. App. & Int. 1990). Here,
the examiner has failed to provide any explanation why the
gasket
or retainer in Yamaji would inherently tarnish while the joint
members would not such that the gasket or retainer of Yamaji
will inherently assume a distinct color making the gasket
(claim 1) or the retainer (claim 4) discernible from the joint
members as required by claims 2, 3, 5, 6, 8 and 9.
Accordingly, the rejection of claims 2, 3, 5, 6, 8 and 9
under 35 U.S.C. § 103(a) will not be sustained.
SUMMARY
14
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