Appeal 2007-0849
Application 10/106,649
present invention” (Br. 5; Reply Br. 4-5). We disagree with Appellant’s
assertion. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376, 77
USPQ2d 1321, 1326 (Fed. Cir. 2005) (“‘Under the principles of inherency,
if the prior art necessarily functions in accordance with, or includes, the
claims limitations, it anticipates’”) (citation omitted). On this record,
Appellant admits that Hill teaches the addition of a composition comprising
the same active ingredient in the same concentration to a personal care
article or functional product (Br. 5-6).
Accordingly, the only remaining issue is whether Hill’s composition
necessarily functions in accordance with Appellant’s claimed invention. In
this regard, Appellant asserts that “the Examiner’s suggestion that the anti-
microbial result is inherent in the use of nonanal is incorrect, because the
present claims are directed to methods, not compositions” (Br. 7).
According to Appellant, “while inherency can be used to reject composition
claims directed to a new feature or property, it cannot be used to reject
method claims that disclose a method for achieving a new effect or result”
(id. at 6). In our opinion, Appellant’s argument misses the mark.
Appellant appears to be under the impression that in order for a prior
art reference to anticipate a claim under the principles of inherency, a person
of ordinary skill in the art must recognize, or have knowledge of, the
inherent characteristic or function of the prior art. This is not the case.
“[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.” [In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cri. 2002)].; see also Schering Corp. v. Geneva
Pharms., 339 F.3d 1373, 1377 (Fed.Cir.2003) (rejecting the
contention that inherent anticipation requires recognition in the
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