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. Oelrich, 666 F.2d at 581, 212 USPQ at 326.
ANALYSIS
The Examiner has specifically identified column 12 as describing the
periodic cleaning of the filter system. The relevant portion of the Del
Vecchio reference identified by the Examiner does not specifically describe
the frequency of at least once a week as specified by the claimed invention.
The description of Del Vecchio, that the cleaning operation can occur more
or less frequently does not indicate that the claimed cleaning interval is
expressly or inherently described in the disclosure of the reference. At best,
the description of Del Vecchio relied upon by the Examiner would suggest
to a person of ordinary skill in the art that the cleaning interval can be
varied. Inferences and suggestions derived from a reference is not an
indication that the claimed property or condition is expressly or inherently
possessed by the reference. The stated rejection is reversed.
III. Claims 29, 30, and 32 are rejected under 35 U.S.C. § 103 as
obvious over the combined teachings of Del Vecchio and Smith.
The rejected claims depend upon claim 26, which has been discussed
above in the § 102 rejections. The Examiner has not provided an
obviousness analysis of claim 26. The Examiner also has not provided an
analysis of claim 26 in the discussion of this rejection. The Examiner bears
the initial burden of establishing a prima facie case of obviousness. In re
Kumar, 418 F.3d 1361, 1366, 76 USPQ2d 1048, 1051 (Fed. Cir. 2005). To
support a rejection on obviousness grounds, the Examiner must provide a
detailed analysis of the prior art and reasons why one of ordinary skill in the
art would have possessed the knowledge and motivation to make the claimed
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