Appeal No. 1996-0826
Application No. 08/271,583
peroxidase, halide and peroxide) as the references in order to inhibit the growth of microorganisms”
(answer, page 9), that fact alone does not establish that one of ordinary skill in the art would have
appreciated or recognized that the combined use of peroxidase, halide and peroxide would have the
effect of selectively killing the pathogenic microbes without eliminating the normal flora of a treated
animal. Inherency and obviousness are different concepts. In re Shetty, 566 F.2d 81, 86, 195 USPQ
753, 756 (“inherency is quite immaterial if ... one of ordinary skill in the art would not appreciate or
recognize that inherent result.”); In re Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (“the
inherency of an advantage and its obviousness are entirely different questions. That which may be
inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”).
Furthermore, Hasegawa does not remedy this deficiency.
As noted by appellant, Hasegawa does not disclose or suggest the non-elimination of normal
flora from a treated animal (supplemental brief, page 9). The examiner has not pointed out and we do
not find where Hasegawa discloses or suggests that a MPO-halide pharmaceutical composition kills
only microbes with diminished or deficient catalase activity. Hasegawa only tested catalase-
deficient/diminished pathogenic microbes. Thus, not only is the cidal effect of Hasegawa’s composition
on catalase-positive/normal microorganisms unknown but also there does not appear to be any
evidence of record establishing that normal flora comprise catalase-positive microorganisms. At best,
Hasegawa in combination with the other references might suggest to one of ordinary skill in the art (a)
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007