Ex parte BUENDIA et al. - Page 6

          Appeal No. 1997-1767                                                        
          Application No. 08/442,959                                                  

          together with the “keto form” described in the prior art                    
          (id.).  The examiner further explains her position as follows:              
                    March discloses that with double bonds the enol                   
                    may be the predominant form, but it is well-                      
                    recognized to one of ordinary skill in the art                    
                    that a tautomer is a steady-state, reversible                     
                    equilibrium, that the keto and enol forms are                     
                    each in equilibrium with the other and that                       
                    while the equilibrium can be to the left, that                    
                    is predominantly to the keto form, it does not                    
                    have to be.  Furthermore, the extent of                           
                    enolization is affected by solvent,                               
                    concentration and temperature. [Bolded emphasis                   
                    original; italics added; answer, p. 5.]                           
               “‘To anticipate a claim, a prior art reference must                    
          disclose every limitation of the claimed invention, either                  
          explicitly or inherently.’”  Mehl/Biophile Int’l Corp. v.                   
          Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir.              
          1999)(quoting In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d               
          1429, 1431 (Fed. Cir. 1997)); accord Glaxo Inc. v. Novopharm                
          Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir.                   
               It is well settled, however, that inherency may not be                 
          established by probabilities or possibilities (i.e., it is                  
          insufficient to merely show that a certain thing may result                 
          from a given set of circumstances).  Mehl/Biophile, 192 F.3d                

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