Appeal No. 2006-2213 Page 6
Application No. 09/771,151
supersaturated form, or that claim steps (ii), (iii), and (iv) that are undisclosed by Abra et
al. are inherent in the document’s disclosure.” Id., at page 9, emphasis in original.
Patentability determinations are based on a preponderance of the evidence.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“After
evidence or argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of the evidence with due
consideration to persuasiveness of argument.”).
As pointed out by Appellants (Brief, page 4), “[a] claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). However, discovery of a
property inherent to a prior art process does not render that process patentable, even if
the prior art did not appreciate the property. Id. at 632-33, 2 USPQ2d at 1054. Thus,
“[n]ewly discovered results of known processes directed to the same purpose are not
patentable because such results are inherent.” Bristol-Myers Squibb Co. v. Ben Venue
Labs., Inc., 246 F.3d 1368, 1376, 58 USPQ2d 1508, 1514 (Fed. Cir. 2001).
Furthermore, “[i]nsufficient prior understanding of the inherent properties of a known
composition does not defeat a finding of anticipation.” Atlas Powder Co. v. IRECO Inc.,
190 F.3d 1342, 1349, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Based on a preponderance of the evidence, we agree with the examiner that
Abra discloses all of the claimed process steps, including the steps of preparing
liposomes at selected size intervals, analyzing the liposomes for the presence of
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