Ex parte STEIDINGER et al. - Page 6

          Appeal No. 1999-0911                                                        
          Application No. 08/852,708                                                  

          prevent tears.  Moreover, Steidinger does not disclose any                  
          dimensions or other information from which it may be inferred               
          that the web feed path is sufficiently long to prevent tears.               
          Accordingly, it cannot be concluded that the combination of                 
          the APA and Steidinger would result in a method which would                 
          inherently meet the last step of claim 52.  The mere fact that              
          a certain thing may result from a given set of circumstances                
          is not sufficient to establish inherency, and in this case,                 
          absent inherency, a prima facie case of obviousness has not                 
          been established. Cf. In re Rijckaert, 9 F.3d 1531, 1532, 28                
          USPQ 1955, 1956 (Fed. Cir. 1993).                                           
               Rejection (1) therefore will not be sustained.                         

          Rejections (2) and (3)                                                      
               These rejections will not be sustained, since the                      
          additional references applied, Otruba and Klaeser, do not                   
          supply the deficiencies in the APA - Steidinger combination                 
          discussed above.                                                            


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