Appeal No. 2001-1037 Page 4
Application No. 08/550,002
facie case of anticipation under 35 U.S.C. § 102.
As best we can understand, the examiner believes that Moore's aqueous
solution fully meets the gel cream limitation of independent claim 1. On its face,
however, an aqueous solution is not a gel cream. The examiner argues that Moore's
aqeous solution "would change [its] consistency to that of what would be considered a
gel cream" when applied to the skin in the manner disclosed in the reference.
(Examiner's Answer, page 4). That argument, however, is speculative and not
supported by adequate evidence in the record. If the examiner's position is based on
inherency, we remind the examiner that:
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. [In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999), quoting In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).]
Simply stated, the examiner has not furnished evidence of record making clear that the
missing descriptive matter, viz., a thin transparent film of lubricant gel cream, is
necessarily present in the method disclosed by Moore.
Furthermore, we agree with applicants (Appeal Brief, page 5) that Moore does
not describe, expressly or inherently, the step of "manually rubbing residual shaving
product into the shaved skin surface area and other skin areas without applying water
to the shaved skin surface area for washing off the shaving product with the residual
shaving product providing skin enhancement and protection" as recited in independent
claim 1. For this reason too, the examiner has not established a prima facie case of
anticipation of the appealed claims under 35 U.S.C. § 102(e) based on teachings found
in Moore.
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