Appeal No. 1997-1767
Application No. 08/442,959
at 1365, 52 USPQ2d at 1305; In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981); Hansgirg v. Kemmer, 102 F.2d
212, 214,
40 USPQ 665, 667 (CCPA 1939). Thus, under the principles of
inherency, a prior art reference anticipates a claim only if
it necessarily includes the claim limitation in question.
Mehl/Biophile, 192 F.3d at 1365, 52 USPQ2d at 1305 (citing In
re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir.
1986)).
In the case before us, the relied upon reference (March)
merely describes keto-enol tautomerism in general terms.
Nowhere does March state that all keto-containing compounds,
much less the compounds described in CA ‘389, necessarily
exist in admixture with the corresponding enol-containing
compound. To the contrary, we find that March suggests
exactly the opposite. Specifically, March indicates the enol
content of CH COOEt as “No enol found - Less than 1 part in 10
3
million” (Table 1, page 67) and further states that “the
extent of enolization is greatly affected by solvent,
concentration, and temperature” (page 67). Here, the examiner
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