Appeal No. 1998-0943
Application No. 08/300,500
“Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
Id. citing Continental, 948 F.2d at 1269, 20 USPQ2d at 1749.
Accordingly, the Examiner’s 35 U.S.C. § 102(e) rejection
of dependent claim 8, as well as claim 10 dependent on claim
8, is not sustained.
Turning to the obviousness rejection of claims 4, 12, and
13, we note that in rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the Examiner to establish a factual basis
to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why
one
having ordinary skill in the pertinent art would have been led
to
12
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007