Appeal No. 2001-0901 Page 6
Application No. 08/937,297
evidence in this record to support the Examiner’s position that the pH is a known result effective
variable in this situation. There is simply no teaching or suggestion in the evidence of record to adjust
the pH of a colorant blend, or to achieve a particular pH range as here claimed.
Alternately, it appears the Examiner is stating the claimed pH will be an inherent result of
blending these two colorants. However, “[i]nherency . . . 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.” See 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). Further, 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 a particular claimed combination. See In re Newell, 891
F.2d 899, 901, 13 USPQ2d 1248, 1250 (Fed. Cir. 1989)
As the Appellants stress in their reply brief (see page 2), specific steps are taken to actually
treat the blend to assure the essential pH range is achieved. This is taught in the specification at page
12, lines 23-30:
When admixed in the weight ratios described above, the resultant blend will
have a pH value ranging from about 9 to 10, depending in part upon the particular
ratios of alkaline annatto to “neutral” caramel colorant employed.
The blend is then treated as described above with either KOH or a strong
mineral acid to adjust the pH of the annatto-caramel colorant blend to desired values
within the essential pH range of 9.1 to 10.0.
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