Appeal No. 1999-1044
Application No. 08/778,392
upon a 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). Inherency simply cannot be established based on
probabilities or possibilities. See In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981).
In the present case, the examiner has not met the burden
of furnishing an adequate factual foundation and/or technical
reasoning to show that the structure taught in Neuendorf
necessarily results in the sign being rotatable about pin 21
or 56 so that the sign is positionable in a plurality of
preselected rotational positions as claimed in claim 1.
In our view, the only suggestion for modifying Neuendorf
in the manner proposed by the examiner to meet the rotatable
limitation stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
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