Appeal No. 2002-1205
Application No. 09/422,380
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
art. Ex Parte Levy, 17 USQP2d 1461, 1464 (Bd. Pat. App. & Int.
1990). Inherency “may not be established by probabilities or
possibilities.” The mere fact that a certain thing may result from a
given set of circumstances is not sufficient. Ex Parte Skinner, 2
USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). Also, the examiner
has the initial burden of providing such evidence or technical
reasons. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990).
In the present case, on pages 5 and 6 of the answer, the
examiner states that because Yamanaka discloses a sealing composition
that includes a lead titanate powder having the specified formula,
“[t]he taught titanate is a ferroelectric material.” Yet, the
examiner does not provide evidence or technical reasoning in support
thereof.
We have carefully reviewed the English translation of Yamanaka.
We observe that on page 9 of the English translation, a discussion of
how the samples, shown in Table 2, are made, is set forth.
The process for making the samples in Table 2 includes mixing
certain raw materials, baking them at from 1100 to 1350ºC for a
period of five hours, followed by crushing and passing the material
through a screen to achieve a particular particle diameter.
The annealing conditions used in making the ferroelectric
material according to appellants’ invention is set forth on pages 5-7
of appellants’ specification. The temperature ranges are from 475ºC
to as high as 700ºC, and the period of time at which the material is
annealed ranges from 10 seconds to 60 minutes. This is in stark
contrast to the aforementioned temperature and time ranges set forth
on page 9 of the English translation of Yamanaka.
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