Appeal No. 2006-0441
Application No. 09/809,604
While acknowledging the reference disclosure, “the Examiner
maintains that while it may be that the polyurethane composition
remains on the surface of the substrate after coating, upon the
application of pressure, the polyurethane composition would
inherently impregnate and/or soak into any of the porous textile
substrates taught by Markush et al.” (Page 7 of answer, first
paragraph, emphasis added). However, it is well settled that a
determination of inherency cannot be established by probabilities
or possibilities, but it is incumbent upon the examiner to
establish the inevitability of the inherency based upon factual
evidence or persuasive scientific reasoning. In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); In re Wilding, 535
F.2d 631, 635-36, 190 USPQ 59, 63-64 (CCPA 1976). In the present
case, the examiner has not cited factual evidence to support the
conclusion of inherency. The examiner explains that Markusch
teaches that the adhesive polyurethane composition is applied by
known methods and, therefore, “asserts that immersing or flooding
a porous textile with the adhesive composition alone or in
combination with the application of pressure would inherently
meet the recited impregnate limitations” (page 7 of answer,
second paragraph). However, the examiner’s reasoning is
specifically rebutted by the disclosure of Markusch that the
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007