Appeal No. 95-4493
Application 07/756,646
Appellants' response to this new ground of rejection is that
the law is clear that for a rejection based upon inherency to be
sustained, the inherency must be an inevitable result and not
merely a probability or possibility (reply brief, paragraph
bridging pages 2-3). Appellants argue that the presently claimed
alpha-1 material was not recognized or identified in Carter.
Thus it is not certain or inevitable that alpha-1 was present in
the fermentation materials produced in Carter and a rejection
based upon inherency is not proper (reply brief, page 3).
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).
The process of preparing compounds alpha and beta of Carter
is markedly different than the process of preparing alpha-1
disclosed by appellants (as specifically set forth on pages 10-13
of the specification). Appellants' process does not use a silica
column purification as set forth by Carter at column 8, lines 31-
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007