Appeal 2006-1306
Application 10/218,991
conventional non-molten coating substances.”(Specification 5). Appellants’
definition that “non-molten coatings” (emphasis added) include polyol
syrups amounts to a clear disclaimer such that “molten polyol” cannot
reasonably be construed to encompass polyol syrups. Phillips, 415 F.3d at
1315, 1321, 75 USPQ2d at 1327, 1332.
In view of our claim interpretation of the term “molten polyol”, Reed
cannot be read as disclosing “molten polyol.” Reed discloses that a “liquid
syrup” containing “xylitol”, “hydrogenated isomaltulose” and water is
formed (col. 7, ll. 61-68) and this “liquid syrup” is heated to a temperature
range of “100°F to about 200°F” (Reed, col. 8. ll. 4-20). From the outset,
Reed’s “liquid syrup” (i.e., “non-molten” polyol syrup by Appellants’
definition) cannot be construed as being a “molten polyol.”
Additionally, we observe that the Examiner in his § 102(b) rejection
over Reed relies on the doctrine of inherency. Regarding the issue of
inherency, it is important to be mindful of the following principles. “In
relying on the 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 prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Inter. 1990) (emphasis in original). The fact that a certain result or
characteristic may occur or be present in the prior art is not sufficient to
establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d
1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993). 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. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
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