Appeal No. 2006-1667
Application No. 10/775,634
that Gordon’s bladder inherently is capable of being inflated
sufficiently that it maintains a convex shape under the weight of
a mattress and a person. When an examiner relies upon a 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. & Int. 1990). 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.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.
Pat. App. & Int. 1986). The examiner has not provided the
required facts and/or technical reasoning showing that Gordon’s
inflatable bladder necessarily is capable of maintaining a convex
shape under the weight of a mattress and a person.
The declaration under 37 CFR § 1.132 of Jon Pearson (filed
Jan. 25, 2005), the inventor, relied upon in the brief (pages 6-
11), states that Gordon’s inflatable bladder has nothing to
create or maintain a convex shape (¶ 11).1 Gordon’s figure 3B
1 Pearson’s supplemental declaration (filed July 18, 2005) was not entered by
the examiner (answer, page 9). The appellant presents an argument in the
reply brief (page 2) as to why the supplemental declaration should be entered.
That argument is not well taken because the examiner’s refusal to enter the
supplemental declaration is a petitionable issue, not an appealable issue
before the board. See Manual of Patent Examining Procedure
§ 1002.02(c)(3)(d)(8th ed., rev. 2, May 2004). Consequently, we have not
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