Appeal No. 1998-2581
Application No. 08/472,965
establishing a prima facie basis to deny patentability rests
with the examiner and the examiner, if relying on a theory of
inherency, must provide a basis in fact and/or technical
reasoning to reasonably support a determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the prior art. See In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981). Inherency cannot be
established by probabilities or possibilities. See In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir.
1999). The examiner has failed to show by fact and/or reasoning
that the insertion of the pipette 34 into the aperture 32 of
Zipilivan would have necessarily resulted in a gas-tight or
liquid-tight seal with the concentration chamber. Actually, the
examiner has not cited any evidence or reasoning that the
pipette 34 is even inserted into aperture 32 during the
introduction of the liquid sample since Figures 1 and 4 of the
reference do not show the pipette 34 in the aperture 32. Of
course, the pipette 34 must be inserted into aperture 32 and go
through channel 36 for withdrawal of the concentrated liquid
sample (see col. 3, ll. 28-30; 40-46). Merely because the sizes
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