Appeal No. 2004-0448
Application No. 09/636,311
than 0.4%. The examiner argues that “[t]he same materials
treated in similar processes would be expected to exhibit similar
properties such as M1 standard white area” (answer, page 4).
The examiner has not provided any evidence or technical
reasoning which shows that the process in any of the relied-upon
references is sufficiently similar to that of the appellants that
there is a basis for reasonably believing that the hydrophobic
particulate inorganic oxide has an M1 Standard White Area of less
than 0.4%. Also, the examiner has not pointed out any disclosure
in the applied references which shows that the hydrophobic
particulate inorganic oxide has a high degree of dispersibility
in cured rubber compositions which, as pointed out by the
appellants (specification, page 3, lines 14-18; page 26,
lines 11-13), is characterized by a low M1 Standard White Area.
Nor has the examiner explained why the applied references would
have led one of ordinary skill in the art to obtain high
dispersibility in cured rubber compositions such that it
reasonably appears that the M1 Standard White Area is the same as
that of the appellants’ hydrophobic particulate inorganic oxide.
The examiner’s mere speculation is not sufficient for
showing inherency, see In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981), or obviousness, see In re Warner, 379 F.2d
3
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