Appeal No. 2007-0048 Page 4
Application No. 10/234,608
the above passage, inherently leads to at least one perforation between one or
more of the cells of the body.
Whether or not Martin’s disclosed cutting process inherently teaches
perforation is a question of fact. In re Napier, 55 F.3d 610, 613, 34 USPQ2d
1782, 1784 (Fed. Cir. 1995). In that regard, “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) (citations omitted).
The Examiner (Answer, p. 3) states only that “Martin discloses that the
body 20 is cut by a cutting process which fully responds to the limitation of ‘at
least one perforation.’” However, the Examiner does not explain how a
“perforation” necessarily flows from Martin’s disclosed cutting process. Martin
describes a generic cutting process. While it is within the realm of possibility that
a cutting process might make perforations in an article, nothing in Martin’s cutting
process necessarily requires use of perforations. The mere possibility that a
generic process may produce a particular result is insufficient as a basis for
establishing that that particular result necessarily flows from, and thus is inherent
to, the process.
A prior art reference that discloses a genus still does not inherently
disclose all species within that broad category. See Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1262, 9
USPQ2d 1962 (Fed. Cir. 1989) (“Under [defendant’s] theory, a
claim to a genus would inherently disclose all species. We find [this]
argument wholly meritless. …”).
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