Appeal No. 1998-1665 Page 6
Application No. 08/476,831
We note that based on the raw materials and process environment, it may be possible that
carbon may be within the claimed range. However, “[i]nherency ... 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.” Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52
USPQ2d 1303, 1305 (Fed. Cir. 1999)(quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981)). See also 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)(“[I]t is not sufficient that a person following the disclosure sometimes obtain the result
set forth in the claim, it must invariably happen.”).
We conclude that the Examiner has failed to establish a prima facie case of obviousness with
respect to the subject matter of all the claims on appeal.
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