Appeal No. 2000-1101 Page 5
Application No. 08/702,325
fractions of high molecular weight relative to molecular weights of the lubricant prior to
fractionation. However, this limitation is not suggested by the applied prior art. Ohnuki
teaches to use a purified lubricant by excluding fractions of low molecular weight. 2
Ohnuki does not teach or suggest using a purified lubricant by excluding fractions of
high molecular weight. 3 To supply this omission in the teachings of the applied prior
art, the examiner made a determination (answer, pp. 5-7) that there is a likelihood that
in Ohnuki's process of purifying a lubricant by excluding fractions of low molecular
weight that high molecular weight fractions would also be eliminated. However, this
determination has not been supported by any evidence.4
2 See, for example, column 3, line 63, to column 4, line 21; column 4, lines 59-63; column 5, lines
17-20; column 7, lines 35-40; table 1; and claim 1.
3 See pages 3-10 of the brief and pages 1-4 of the reply brief.
4 The examiner's broad conclusory statement, standing alone, is not "evidence." See In re Lee,
277 F.3d 1338, 1342-45, 61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002). See also In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). When relying upon a theory of inherency, the
examiner must provide 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 applied prior art. See
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). It is well-settled that under
principles of inherency, when a reference is silent about an asserted inherent characteristic, it must be
clear that the missing descriptive matter is necessarily present in the thing described in the reference, and
that it would be so recognized by persons of ordinary skill. Continental Can Co. v. Monsanto Co., 948
F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). As the court stated in In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ
665, 667 (CCPA 1939)):
Inherency, however, 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.
[Citations omitted.] If, however, the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the questioned
function, it seems to be well settled that the disclosure should be regarded as sufficient.
In this case, the examiner has not shown that the natural result flowing from the method of purifying a
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