Appeal No. 2005-0899
Application No. 10/058,520 Page 4
In particular, we emphasize that the examiner, in relying on
a theory of inherency, must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristics necessarily flow from the
teachings of the applied prior art. See In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
Inherency cannot be established based on probabilities or
possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). Here, the examiner simply has not provided
persuasive support for the allegedly inherent description of a
substantially constant reflux rate of the fatty acid ester in the
polyol fatty acid polyester preparation methods disclosed in
either Rizzi or Volpenhein.
In this regard, the examiner points to the abstract and
columns 2-5 of Rizzi, and columns 2-4 of Volpenhein for
disclosure of reactants and synthesis temperature ranges (110 to
180 degrees centigrade) and pressure conditions (0.1 to 760 mm of
mercury), which process parameters are asserted as more or less
overlapping with appellants’ claimed reactants and disclosed
temperature and pressure reaction parameters as set forth at page
11 of their specification. See pages 4 and 5 of the answer. The
examiner argues, in effect, that appellants’ claimed
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