Appeal No. 95-0777
Application 07/756,411
The examiner concludes that “inherency is a certainty”
because both the prior art and the instant process use the
identical microorganism strain and “subject it [to] substantially
identical fermentation procedures” (examiner’s response to reply
brief, page 1). However, it is clear from the above comparison
of the processes of Carter and appellants that the fermentation
and purification procedures are not “substantially identical” and
it has not been shown by the examiner that it is inevitable that
the same products would be produced by each process. Therefore,
the examiner has not shown that the compound of appealed claim 1
is inherently produced by the prior art process.
Rejection for anticipation requires, as noted above for
section 103 rejections, that a reference must describe the
applicants’ claimed invention sufficiently to have placed a
person of ordinary skill in the art in possession of it, i.e.,
the reference must contain an enabling disclosure. See In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
However, the examiner has not presented any evidence that a
skilled artisan would have expected any compounds other than
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