Appeal 2007-2134
Application 10/311,880
to a value above a thermal decomposition point is not supported by the
disclosure of Horie, much less shown to necessarily occur during the
practice of Horie’s described method.
The factual determination of anticipation requires the disclosure in a
single reference of every element of the claimed invention, either explicitly
or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). The Examiner, in relying on a theory of inherency,
must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristics necessarily flow
from the teachings of the applied prior art. See In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). The Examiner has
not provided persuasive support for an inherency theory. Inherency cannot
be established based on conjecture and/or probabilities or possibilities. See
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); Ex
parte Skinner, 2 USPQ2d 1788, 1788-1789 (Bd. Pat. App. & Int. 1986).
On this record, we reverse the Examiner’s anticipation rejection.
§ 103(a) Rejections
In rejecting dependent claims 12 and 13, the Examiner relies on Horie
as applied against independent claim 1 in combination with Shinriki to
allegedly show the obviousness of the additional features of dependent
claims 12 and 13. For dependent claim 14, the Examiner additionally
applies Fukuda for allegedly showing the obviousness of the additional
limitations added by dependent claim 14.
However, the Examiner has not relied upon, much less established,
how the additionally applied Shinriki, or Shinriki together with Fukuda,
would have suggested a modification of Horie’s film forming method to
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