Appeal No. 1998-2147
Application No. 08/247,356
end of the prior art molecular weight range the Tg of the prior art resins will meet
applicants’ claim limitations.” (Examiner’s Answer, page 7, lines 6-11; page 9, line 19
to page 10, line 2; and page 12, lines 7-12).
When relying upon the theory of inherency, the Examiner has the initial burden
of establishing 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 prior art. See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App.
& Int. 1990). The Examiner is apparently relying on the theory that the higher the
molecular weight the higher the softening point. This theory does not speak to the
photosensitivity and resolution of these “high molecular weight” polymers. The
Examiner does not provide a sufficient factual basis to demonstrate that the “high
molecular weight” polymer described in Crivello, Nguyen-Kim or Elsaesser
necessarily possesses a Tg greater than 150oC and the photosensitivity and resolution
required by the claims. We have not been directed to specific portions of Crivello,
Nguyen-Kim or Elsaesser which establish that their high molecular weight polymers
possess the recited photosensitivity and resolution characteristics of the claims. It is
possible that Crivello’s, Nguyen-Kim’s or Elsaesser’s high molecular weight polymers
may possess a Tg greater than 150oC and the photosensitivity and resolution
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