Appeal No. 1999-2383
Application No. 08/573,487
13-14). However, appellants have submitted evidence that “Xerox L”
is not a coated paper and thus the AP values are not comparable to
those recited for the coated paper of claim 1 on appeal (Brief,
page 9; see the Matsuda Declaration under 37 CFR § 1.132 dated Nov.
30, 1998, hereafter the Matsuda Declaration). We do not find any
discussion of the Matsuda Declaration in the Answer.
The examiner admits that Hosomura fails to disclose the
smoothness or friction limitations required by the claims (Answer,
page 3). However, the examiner takes the position that one skilled
in the art would expect these values “to be inherent” since “the
inventions overlap and can be exactly the same.” Id.
“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, 1950-51 (Fed. Cir.
1999), quoting from In re Oelrich, 666 F.2d 578, 581-82, 212 USPQ
323, 326 (CCPA 1981). The initial burden rests with the examiner
to provide a basis in fact and/or technical reasoning to reasonably
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