Appeal 2006-2492
Application 09/916,247
Inherency may not be established by probabilities or possibilities, i.e.,
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 (CCPA 1981).
ANALYSIS
The Examiner has specifically identified Figure 4 as describing the
periodic cleaning of the filter system described by Smith. The Smith
reference description of Figure 4 appearing in column 18 does not include a
description of draining the tank during the cleaning process. The Examiner
direct us to column 10 and for describing an alternative embodiment that
indicates draining the tank is not necessary during the cleaning process
(Answer 5). The Examiner subsequently states that "a reference may be
relied upon for all that it would have reasonably suggested to one having
ordinary skill in the art, including nonpreferred embodiments" (Answer 5)
(emphasis added). The Examiner has not carried the burden of making out a
prima facie case of anticipation in the first instance by pointing out where
each and every element of the claimed invention, arranged as required by the
claim, is described identically in the reference, either expressly or under the
principles of inherency. It appears the Examiner is relying on suggestions of
the reference to assert the requirements of the present invention are
inherently possessed by the Smith reference. However, inherency cannot be
based upon probabilities or possibilities. Suggestions and inferences which
could have been derived from a reference are not proper basis for
formulating an anticipation rejection under § 102. The stated rejection is
reversed.
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