Appeal No. 1998-1655 Page 20
Application No. 08/367,766
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, although Yamada teaches pressing the cartridge
frame against the chassis, the examiner fails to provide a
factual basis or technical reasoning to reasonably support a
determination that the resultant pressing force is sufficient
to undeform the first or second main surface. To the
contrary, it is possible that deformation of a disk cartridge
would prevent the frame from being pressed against the
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