Appeal No. 1998-1445 Page 7
Application No. 08/489,680
limitations require a dielectric material having a compressive
stiffness of at least 1000 pounds per linear inch.
The examiner fails to show a suggestion of the
limitations in the prior art. "In 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. Pat. App. & Int. 1990) (citing In re King, 801 F.2d 1324,
231 USPQ 136 (Fed. Cir. 1986); W.L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983);
In re Oelrich, 666 F.2d 578, 212 USPQ 323 (CCPA 1981);
In re Wilding, 535 F.2d 631, 190 USPQ 59 (CCPA 1976);
Hansgirg v. Kemmer, 102 F.2d 212, 40 USPQ 665 (CCPA 1939)).
Here, the examiner fully admits "the fact that the
stiffness of the dielectric material depends on many factors
such as density, cell structure and thickness." (Examiner's
Answer at 7.) He further admits that Fox and Wilkenloh do not
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