Appeal No. 1998-3157
Application No. 08/466,797
pages 1-6 of the Reply Brief regarding other differences
found in the McKenzie’s spray drying operation. We further
note that the examiner’s speculation that the polyethylene
produced according to the McKenzie’s Example 15 would
possess an internal attrition angle from 30 to 40° is
unsubstantiated as a matter of law. The prior art compound
or composition may possible have the same features will not
substantiate a finding of inherency. Rather, inherency
must flow as a necessary conclusion from the prior art, not
simply a possible one. In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981). Furthermore, we agree with
appellants’ quoting of the court in In re Newell, 891 F.2d
899, 901, 13 USPQ2d 1248, 1250 (Fed. Cir. 1989), that “a
retrospective view of inherency is not a substitute for
some teaching or suggestion which supports the selection
and use of the various elements in the particular claimed
combination.” Moreover, as mentioned, supra, the examiner
has not even satisfied that the product would inherently
have an internal attrition angle property as claimed.
With respect to the secondary references of Hang,
Green, Martin, Lo, and Pistor, we find that these
references do not cure the deficiencies found in McKenzie.
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