Appeal No. 1998-2166 Page 4
Application No. 08/572,792
obvious from the description of either genus. The amount of exploration required to find the grove
containing the one hundred particular trees may well make the location unobvious if details as to the
identity and characteristics of those one hundred trees are unknown. This is the situation in the present
case. Neither Doerner or Lal describe which alloys within the genus of either reference have a Curie
temperature below 80 °C.
We agree with the Examiner that a prima facie case of unpatentability would be established if a
Curie temperature below 80 °C is an inherent characteristic of the genus of alloys described by either of
the references. “[I]t is elementary that the mere recitation of a newly discovered function or property,
inherently possessed by things in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art.” In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA
1977)(quoting In re Swinehart, 439 F.2d 210, 169 USPQ 226 (1971)). However, to be an inherent
property, the Curie temperature of the genus of prior art alloys must always be lower than 80 EC each
time the prior art description of formulating the alloy composition is followed. Alternatively, the
Examiner must point to an exemplified alloy which would reasonably be believed to have the property.
“Inherency ... may not be established by probabilities of possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.” Mehl/Biophile Int’l Corp. v.
Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir. 1999)(quoting In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)). See also Glaxo, Inc. v. Novopharm
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