Appeal No. 1998-0688
Application 08/274,158
described in the reference, and that it would be so recognized
by person of ordinary skill.’” In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-1951 (Fed. Cir. 1999)(citing
Continental Can Co. V. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991)). “Inherency, however, may
not be established by probabilities or possibilities. The
mere fact that a certain thing may result for a given set of
circumstances is not sufficient.” Id. at 1269, 20 USPQ2d at
1749.
In view of the analysis above, we find that the Examiner
has failed to meet the burden of providing a prima facie case
of anticipation. We find no clear and express teachings in
Hosaka related to a substantially achromatic document covering
surface with a regular reflectance of from 1.5% to 20% and a
relative intensity of irregularly reflected light of from N4
to N8.5 as recited in Appellant’s claim 1. Additionally, we
disagree with the Examiner that Hosaka’s document cover having
a “small reflectance” can be reasonably interpreted to include
a reflectance of greater than 1%. We find that the Examiner’s
analysis of Hosaka’s disclosure to be merely speculative and
based on prohibited probability and possibility. Accordingly,
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