Appeal No. 2000-0091
Application No. 08/732,254
characteristics (x-ray diffraction spectra recited in claims 1 and 2) relied on
herein.” Examiner’s Answer, page 3.
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987). “An inherent structure, composition or
function is not necessarily known. . . . Insufficient prior understanding of the
inherent properties of a known composition does not defeat a finding of
anticipation.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1349, 51
USPQ2d 1943, 1947 (Fed. Cir. 1999).
“‘Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.’” In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)). When the inherent properties of a prior art
product are at issue, “the examiner must provide some evidence or scientific
reasoning to establish the reasonableness of the examiner’s belief that the
functional limitation is an inherent characteristic of the prior art” before the burden
is shifted to the applicant to disprove the inherency. Ex parte Skinner, 2
USPQ2d 1788, 1789 (Bd. Pat. App. Int. 1986).
Here, the claims on appeal are not directed to delavirdine mesylate per se,
but are limited to the S and T crystal forms of that compound. Therefore, to
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