Board reverses in Ex parte GERHARDINGER

The Board reversed the examiner in Ex parte GERHARDINGER, which decision turned in part on the concept of inherency:

ood does not disclose where the triac would be located in any of the surrounding frame construction, the ballast, or the door frame and certainly does not discuss any relation between the triac and a thermally conductive area of the surrounding frame construction, the ballast, or the door frame. Further, while it may be possible to have the triac in Wood in direct thermal contact with a thermally conductive area of the surrounding frame construction, for example, the mere possibility of this arrangement is not sufficient to establish a prima facie case of inherent anticipation. “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.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal citation and quotations omitted).