Appeal No. 2003-0754
Application No. 09/553,630
allowed to others”).
Therefore, we disagree with appellants’ position in the
present case that because the composition claims have been
allowed in a separate application by a different examiner,
involving the same art, the present claim should also be found
allowable as a matter of law.
Hence, the critical issue before us in resolving each of
the rejections is whether Büttner discloses use of a catalyst of
an alkyl tin oxide that has been dissolved with an organic or
inorganic acid prior to incorporation in the coating
composition.
We note that when an 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). Here, the examiner asserts
“there is no doubt that the catalyst is soluble in the acid. If
there is enough acid present in the composition, all the
catalyst will be dissolved.” Answer, page 4. However, the
examiner does not support these statements by any basis in fact
and/or technical reasoning. For example, the examiner does not
explain how there is enough acid present in Büttner to dissolve
the catalyst. The examiner states that he has invited
appellants to show whether one mole of DBTO does or does not
dissolve in five moles of acid but appellants fail to avail
themselves to this opportunity. However, it is the examiner’s
burden of providing factual evidence and/or technical reasoning
to support the determination of inherency. See In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327, 231 USPQ 131, 138-39 (Fed. Cir.
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