Appeal No. 2001-2490
Application No. 09/388,056
necessarily flows from the teachings of the prior art. “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 Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981). On this record, we determine
that the examiner has not provided a basis in fact or technical
reasoning to support a determination of inherency.
As correctly argued by appellant (Reply Brief, pages 1-2), the
examiner has not established that there is an absolute certainty
that the catalyst of Hupp is acidic. Hupp discloses that alumina,
silica-alumina, and clays are useful as a carrier for certain
specified catalysts (col. 2, ll. 56-68). The entire “supported
metal oxide catalyst” functions as a purification agent by aiding
in the removal of the carbonyl compounds (Hupp, col. 3, ll. 1-4).
Accordingly, the examiner has not presented any convincing evidence
or reasoning to support the position that all of the catalyst
support materials taught by Hupp would have necessarily been
acidic. Appellant’s disclosure only relates to certain specific
catalysts within the genus of alumina, silica-alumina and clays
that are acidic (specification, page 4, ll. 4-13).
Again as correctly argued by appellant (Reply Brief, page 2),
the examiner has not established with certainty that the water
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