Appeal No. 1999-0710
Application No. 08/716,875
the mean free path being defined as an average of edge-to-
edge, uninterrupted distances between all pairs of said
structural elements. The examiner concedes that the Lemay
reference does not expressly discuss the mean free path of the
transfer layer. Nevertheless, the examiner has taken the
position that this claim requirement is an inherent
characteristic of Lemay’s transfer layer (e.g., element 20 in
Figure 2) because, according to the examiner, there does not
seem to be any difference in the methods used to make the
transfer layer of Lemay’s and appellants’ articles, and
because Lemay’s transfer layer appears to have edge-to-edge,
uninterrupted distances between all pairs of structural
elements within the claimed range (answer, page 6).
The examiner’s position on inherency is fatally flawed
because there is nothing on the face of the Lemay disclosure
which would reasonably lead to the conclusion that the
required mean free path range is an inherent characteristic of
Lemay’s transfer layer, and because the examiner has failed to
advance any factual basis or cogent line of reasoning to show
that this would be the case. Inherency may not be established
by probabilities or possibilities. In re Oelrich, 666 F.2d
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007