Appeal No. 2001-2554 6
Application No. 08/925,321
2 hours at 95-100o C. See page 264.
With respect to the findings for each of the references alone or in combination, we
determine that none of the references suggest or teach the inherency of the claimed
hexenuronic acid reduction of at least 50% as required by the claimed subject matter.
Although under some disclosed conditions, any hexenuronic acid could have been reduced
by 50% according to the teachings of the references of record, inherency requires that the
characteristic must necessarily be present in the specific range required by the claimed
subject matter. Stated otherwise inherency requires that the amount of hexenuronic acid
present be reduced by at least 50% under the conditions disclosed in the references of
record. It may not be established by probabilities or possibilities. Hence, the mere
possibility that hexenuronic acid is reduced by 50% as required by the claimed subject
matter is not sufficient to establish inherency. See In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981); Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.
Pat. App. & Int. 1986). Furthermore, the examiner must provide some evidence or
scientific reasoning that the hexenuronic acid present in the processes of the prior art has in
fact been reduced by the amount required by the claimed subject matter and hence is an
inherent characteristic of the prior art processes. The record before us is silent with respect
to any reduction in hexenuronic acid. Accordingly, the rejection of the examiner on the
grounds of obviousness is reversed.
Because we reverse on this basis, we need not reach the issue of the sufficiency of
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