Appeal No. 2004-0648
Application No. 09/379,047
monitoring this current, the thickness of the substrate 46 is
accurately measured.
Because Winer does not explicitly disclose that photons are
emitted through the substrate, we next consider whether the
examiner has shown that Winer inherently teaches such.
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 instant case, the examiner states that “Winer shows
photons entering (Winer, col. 6, lines 34-62) and in order to
measure [sic, measured] the photocurrent the photons entering
must be emitted as is recognized by a person of ordinary skill in
the art”. Answer, page 5.
The above conclusion made by the examiner is not supported,
by evidence or a technical explanation which reasonably supports
a determination that the allegedly inherent characteristic
(photons emitted through a substrate) necessarily flows from the
teachings of the applied art. Ex Parte Levy, 17 USQP2d 1461,
1464 (Bd. Pat. App. & Int. 1990). Appellants dispute this very
issue. See pages 3-4 of the Brief. Because the examiner does
not adequately support his conclusion, we cannot affirm the
anticipation rejection based upon an inherency theory either.
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