Appeal No. 2001-1779
Application No. 09/398,898
does not provide the amount of estrogenic activity as instantly
claimed.
We do not find the examiner’s argument persuasive. On the current
record we do not find, and the examiner does not point to, any facts or evidence
establishing that any chickpea extract disclosed by WO ‘069 necessarily has the
claimed estrogenic activity equivalent to a concentration of at least 1 nM
estradiol. The data provided in appellants’ specification at Table 1 (specification,
page 15) demonstrate the estrogenic activity of the particular extract assayed
therein. The data in Table 1 do not demonstrate that every organic extract of
chickpea will have an estrogenic activity equivalent to at least 1 nM of estradiol.
Moreover, WO ‘069 does not disclose any examples wherein an organic
extract of chickpea is prepared. Thus, WO ‘069 does not provide factual
evidence, such as starting amounts of chickpea or chickpea extract, or amounts
of extraction solvent, which can be used to establish that any chickpea extract
disclosed by WO ‘069 necessarily has the claimed estrogenic activity. Because
we do not discern facts in WO ‘069 allowing for a meaningful comparison
between claim 2 and WO ‘069, we find that the examiner has not established that
WO ‘069 inherently discloses an organic chickpea extract having an estrogenic
activity equivalent to 1 nM of estradiol.
Inherency cannot be established by probabilities or possibilities, and the
fact that a specific result might occur from a certain set of circumstances is
insufficient to establish inherency. Robertson, 169 F.3d at 745, 49 USPQ2d at
1951, citing Continental Can, 948 F.2d at 1269, 20 U.S.P.Q.2d at 1749, citing
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007