Appeal No. 2006-1389 Page 7
Application No. 09/912,471
characteristic of an invention otherwise in the prior art[,]” and it is well settled that “the
new realization alone does not render the old invention patentable” (Perricone, 432 F.3d
at 1377, 77 USPQ2d at 1327). “[A] limitation or the entire invention is inherent and in
the public domain if it is the ‘natural result flowing from’ the explicit disclosure of the
prior art” (id. citations omitted). In this case, it is undisputed that RNA degradation is the
natural result of treating soy protein materials with FinaseŽ, a commercial preparation
containing both phytase and acid phosphatase.
As summarized in Perricone, id. at 1375-76, 77 USPQ2d at 1325-26:
A single prior art reference that discloses, either expressly or inherently,
each limitation of a claim invalidates that claim by anticipation. Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 [24 USPQ2d 1321] (Fed. Cir. 1992). Thus, a prior art
reference without express reference to a claim limitation may nonetheless
anticipate by inherency. See In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349 [64 USPQ2d 1202] (Fed. Cir. 2002). “Under the principles of
inherency, if the prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.” Id. (quoting MEHL/Biophile
Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 [52 USPQ2d 1303] (Fed. Cir.
1999). Moreover, “[I]nherency is not necessarily coterminous with
knowledge of those of ordinary skill in the art. Artisans of ordinary skill
may not recognize the inherent characteristics or functioning of the prior
art.” Id.; see also Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 [67 USPQ2d 1664] (Fed. Cir. 2003) (rejecting the contention that
inherent anticipation requires recognition in the prior art) (citing In re
Cruciferous Sprout Litig., 301 F.3d at 1351; MEHL/Biophile, 192 F.3d at
1366).
“Thus, when considering a prior art method, the anticipation doctrine examines
the natural and inherent results in that method without regard to the full recognition of
those benefits or characteristics within the art field at the time of the prior art disclosure.”
Id. at 1378, 77 USPQ2d at 1327. Based on the examiner’s undisputed assertion that
Simell describes treatment of soy protein material with FinaseŽ, in a manner and
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