Appeal No. 1998-2147
Application No. 08/247,356
characteristics required by the claims. However, inherency cannot be established by
probabilities or possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981). As stated in In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d
1955, 1957 (Fed. Cir. 1993) (quoting from In re Oelrich, 666 F.2d at 581, 212 USPQ
at 326), “[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient [to establish inherency]” (emphasis in original). Under
these circumstance, we cannot conclude that the examiner has met the minimum
threshold of establishing inherency under 35 U.S.C. § 102 or obviousness under 35
U.S.C. § 103. Therefore, the rejection of claims 29, 36 and 37 under § 102 and § 103
are reversed.
Rejection Under 35 U.S.C. § 103
Claim 28 is rejected as unpatentable under 35 U.S.C. § 103 over Crivello,
Nguyen-Kim, or Elsaesser in view of Uenishi ‘389 or Uenishi’ 582.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally
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