Appeal No. 95-0777
Application 07/756,411
sustained, the inherency must be an inevitable result and not
merely a probability or possibility (reply brief, page 2).
Appellants argue that Carter has no teaching or suggestion that
materials other than alpha and beta were produced.
For a reference to anticipate a claim, “the disclosure need
not be express, but may anticipate by inherency where it would be
appreciated by one of ordinary skill in the art.” Glaxo Inc. v.
Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed.
Cir. 1995), cert. denied, 116 S. Ct. 516(1995). As correctly
stated by appellants, the inherency must be an inevitable result
and not merely a possibility. See In re Oelrich, 666 F.2d 578,
581-82, 212 USPQ 323, 326 (CCPA 1981).
As noted by appellants on page 2 of the reply brief, the
process of preparing compounds alpha and beta of Carter is
markedly different than the process of preparing Gamma disclosed
by appellants (as specifically set forth on pages 10-13 of the
specification). Appellants’ process does not use the same
nutrient medium as Carter nor the same air flow rate.
Appellants’ process does not use a silica column purification as
set forth by Carter at column 8, lines 31-42, and uses further
purification with a reverse phase column that Carter neither
recognizes or employs (see the specification, page 13).
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