Appellant wins on obviousness in Gelber

On inherency at the Board, from Ex parte Gelber


“In relying upon the theory of inhere
ncy, 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 (BPAI 1990). In this case, the question raised is whether the
gaming terminal of Kelly is
necessarily
capable of normalizing bonus tokens
received from another gaming terminal
.



Fine was cited:


Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independe
nt claims 1, 11, and 20 and their
respective dependent claims 2, 3,
5-10, and 12-19 under 35 U.S.C. § 103(a)
as unpatentable over Kelly
cannot be sustained.
See In re Fine,
837 F.2d
1071, 1076 (Fed. Cir. 1988).