Appeal No. 2002-1596
Application No. 09/284,701
to the same degree” when subjected to cooling in the Drechsel ‘586
process (Answer, page 8, italics added).
The examiner, if relying upon a theory of inherency, must
provide a basis in fact and/or technical reasoning to reasonably
support a determination that the allegedly inherent feature
necessarily flows from the teachings of the prior art. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient. See In re Robertson, 167 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). On this
record, the examiner has cited appellants’ description of the prior
art on pages 1-2 of the specification as the basis for concluding
that nitrosyl sulfuric acid would have been present as a
contaminant in the sulfur trioxide containing gas stream of
Drechsel ‘586 (Answer, page 5). However, the actual passage in
the specification recites
This process, however, has the disadvantage that in the
catalytic conversion of SO2 to SO3, in dependence on the
content of nitrogen oxide after the SO2 production, there is
also formed nitrosyl sulfuric acid, which likewise gets into
the highly concentrated sulfuric acid and must be removed with
a relatively great technical effort. [Specification, page 1,
last six lines, underlining added].
Accordingly, the specification does not disclose with certainty
that nitrosyl sulfuric acid is formed in every process for
manufacturing sulfuric acid from sulfur trioxide, but only in those
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