Appeal No. 2004-0896
Application No. 09/751,774 Page 3
DECISION AND OPINION
We reverse.
A central question before us is whether the examiner’s
assertion of inherency with respect to the Soukal reference is
reasonable. We answer that question in the negative since the
examiner has not provided a sufficient basis in fact and/or
technical reasoning to reasonably support the examiner’s
assertion (answer, page 4) concerning the allegedly inherent
performance of the claimed process steps, including the
replicating step, as necessarily flowing from the teachings of
the applied prior art. See Ex parte Levy, 17 USPQ 1461, 1464
(Bd. Pat. App. & Int. 1990).1
Concerning this matter, we observe that Soukal describes a
medical therapeutic and/or diagnostic system including at least
one operating means including computing means allocated thereto,
and a control means communicating therewith for controlling the
operation. Exemplary therapeutic and/or diagnostic systems
described as prior art in Soukal (column 1, lines 13-18) include
1 The examiner’s obviousness position advanced in the
rejection before us hinges on the examiner’s assertion of
inherency with respect to Soukol’s disclosed therapeutic and
diagnostic system.
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