Appeal No. 1998-0968
Application No. 08/031,075
rejection. See In re Samour, 571 F.2d 559, 562, 197 USPQ 1, 3-4 (CCPA 1979). That is,
“extrinsic evidence may be considered when it is used to explain, but not expand, the
meaning of a[n] [anticipatory] reference.” In re Baxter Travenol Labs, 952 F.2d 388, 390,
21 USPQ2d 1281, 1284 (Fed. Cir. 1991). Finally, it is well established that
[A] prior art reference [that] does not expressly set forth a particular element
of the claim . . . still may anticipate if that element is “inherent” in its
disclosure. To establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268,
20 U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991). “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.” Id. at
1269, 20 U.S.P.Q.2d at 1749 (quoting in re Oelrich, 666 F.2d 578, 581, 212
U.S.P.Q. 323, 326 (C.C.P.A. 1981)).
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
Nahm describes a hybridoma cell line secreting monoclonal antibody HGAC-1. The
antibody was raised against a group A streptococcal vaccine and recognizes the terminal
N-acetylglucosamine residue on the group A carbohydrate. In addition, “HGAC-1 binds to
N-acetylglucosamine conjugated to bovine serum albumin, substantiating its specificity for
the N-acetylglucosamine hapten.” Page 507, right-hand column. There is no dispute that
Nahm does not expressly describe an antibody which additionally binds mammalian cells
or membranes, mammalian IgG, denatured immunoglobulins, and sialidase- and
galactosidase-treated fetuin (but not untreated fetuin). Rather, the issue for our
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