Appeal No. 2006-1562
Application No. 10/720,948
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
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (C.C.P.A. 1981).
We find that the Examiner has not met her initial burden of
establishing that Maged or Micchia inherently discloses the
claimed sufficient “thickness” limitation. We agree with the
Appellant’s argument made in his reply brief: the Examiner has
merely provided a conclusory statement that Maged’s and
Micchia’s thickness must inherently be sufficient to interfere
with the individual’s ability to look at any object. (Reply
Brief, page 2, in comparison with Final Office Action, pages 3
and 4). The Examiner has failed to provide any citation from
the text of the Maged or Micchia patent, or any technical
reasoning to show that either patent inherently meets the
Appellant’s sufficient “thickness” limitation. Notably, both
Maged and Micchia are silent regarding the exact thickness of
their respective inventions. Maged says nothing about his
article thickness, whereas Micchia only vaguely states that the
device is “thin and pliable”. (Micchia, column 3, line 43). In
view of Maged’s and Micchia’s silence regarding thickness and
the Examiner’s failure to provide any basis-in-fact or technical
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