Appeal No. 1998-1411 Page 6
Application No. 08/562,316
said that the Tg is necessarily, in all cases, above 110 /C. It is possible that one of the particular
acrylic and methacrylic polymers which were used by Hill and Hofmann had a Tg of at least 110 /C.
However, the Examiner has not shown that it is reasonable to believe that any of those polymers did
indeed have such a Tg. Inherency may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not sufficient. The disclosure
must be sufficient to show that the natural result flowing from the formulation of the resists of Hill and
Hofmann is a resist containing a binder of acrylic or methyacrylic polymers with a Tg of 110 /C or
greater. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). The result must
be a consequence of what was deliberately intended. W.L. Gore & Assocs. V. Garlock, Inc, 721
F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983). Furthermore, “it is not sufficient that a
person following the disclosure sometimes obtain the result set forth in the claim, it must invariably
happen.” Glaxo, Inc. v. Novopharm Ltd., 830 F.Supp. 871, 874, 29 USPQ2d 1126, 1128 (E.D.
N.C. 1993), aff’d, 34 USPQ2d 1565 (Fed. Cir.), cert. denied, 516 U.S. 988 (1995).
For the above reasons, we find that the Examiner has failed to present a sufficient level of
evidence tending to show that it is reasonable to believe that the acrylic and methacrylic polymers of Hill
and Hofmann inherently possess a Tg of 110 /C or greater. While this is a sufficient reason in and of
itself to reverse the rejection, we also conclude that there is an insufficient reason, suggestion, or
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