Appeal No. 2003-0318
Application 09/377,262
“In relying upon the 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 (Bd. Pat.
App. & Int. 1990) (citations omitted). We are in agreement with
appellant that the examiner has failed to provide the requisite
factual basis in support of his conclusion that a filter
resulting from the combined teachings of Jones and Singer would
necessarily exhibit the features required in claim 1. See reply
brief, paper 12, received October 3, 2002, page 1. As further
noted by appellant, the examiner discusses various features of
the Singer and Jones filters, such as weight percent and size of
the fibers, but fails to state how these features relate to
removal efficiency and quality factor. See Id.
As explained by appellant,
[t]here are a number of structural factors that effect
filtration performance in a filtering web. In order to
satisfy the present invention, these structural factors need
to be selected so that one layer exhibits nondecreasing
removal efficiency and the other layer exhibits decreasing
removal efficiency at the completion of the DOP
penetration/loading test. Further, the second layer needs
to be constructed so that it exhibits an initial quality
factor that is greater than the initial quality factor of
the first layer.
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