Appeal No. 1997-3307
Application No. 08/121,402
Rejection II1
Appellants argue that their claimed bulk density
property is not set forth in Burdick ‘908 and Burdick ‘909.
(Brief, pages 5-6).
The examiner rebuts and states that Appellants have
not convincingly established that their claimed bulk
densities are contradicted by the Burdick references. The
examiner points out that the art of record employs the same
salts and polymer suspensions as claimed. (Answer, page
11).
We find that appellants’ specification indicates that
a wide variety of methylcellulose derivatives of varying
bulk densities are generally available in the marketplace.
(Specification, page 3). The Bulk density is determined
according to the description found on pages 4-5 of
appellants’ specification variable. When an examiner
relies 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
“may not be established by probabilities or possibilities.
1 Appellants argue that the Burdick references are not prior
not because these patents have the same assigness as the
instant application (Aqualon Company)(Brief, page 5).
5
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