Ex parte BANERJEE et al. - Page 12




          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                                           





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