Appeal No. 2001-0936
Application No. 08/952,208
We next turn to the examiner’s contention that THA-I would
be inherently present upon storage. We find that the curve
plotted above clearly has a diminishing inflection, but as to
whether it will diminish completely before it reaches the lowest
claim limitation plotted, 0.01 is still unclear to us. Indeed,
the last three data points look nearly linear to our view, and
the description of the first data point is “less than 0.01”, not
zero. We therefore question the conclusions drawn from this
data.
Further, the appellants specification states that storage at
room temperature will bring about the formation of THA-I (Page 1,
lines 8-10). It is, therefore, reasonable to find that some THA-
1 is formed upon storage.
We note that when a examiner relies upon a theory of
inherency, “the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Inherency “may not be established by a
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances in not
sufficient.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).
Also, the examiner has the initial burden of providing such
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