Appeal No. 1999-0267
Application 08/744,268
characteristic necessarily flows from the teachings of
the applied prior art.” Ex parte Levy, 17 USPQ2d 1461,
1464 (Bd.Pat.App.Int. 1990). "Inherency 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.” Ex parte Skinner, 2
USPQ2d 1788, 1789 (Bd.Pat.App.Int. 1986). Here, we find
that the examiner has not provided the required evidence
or technical reasoning, but, rather has improperly relied
upon the possibility that the glass in Mizuno has the
claimed failure stress values and Youngs’ modulus values.
With regard to the examiner's comments on
obviousness, we find that the examiner has not provided
an explanation of why one of ordinary skill in the art
would have chosen appellants' claimed glass support and
surface, having the particularly claimed combination of
properties. It appears that the examiner's position is
that because such a glass support is available in the
marketplace, then it would have been obvious to have
selected it. However, the examiner has not shown that
the selection is so limited such that a choice would have
been obvious. That is, a myriad of glass supports may be
available, and the examiner has not explained why it
would have been obvious to have selected appellant's
particularly claimed glass support from the myriad of
choices that are possibly available in the marketplace.
On the record before us, we cannot find facts that show
the selection is limited. We also cannot find facts that
would have motivated the skilled artisan to have made
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