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.
1995).
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
6
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