Appeal No. 2001-0936
Application No. 08/952,208
evidence or technical reasoning. See In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re King, 801 F.2d
1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986).
This, the examiner has not done. Undoubtedly, some THA-I is
present in 6-ACN. However, we note that the evidence supports a
conclusion that (I) pure reactants are generally preferred in
this field, (II) the methods of preparation of 6-ACN indicate
some isolation or separation of the product, (III) at best it
would take at least about 48 days (2 x 576 hours) to reach the
claimed lower limit. Waiting a month and a half to use reactants
to reach a minimum threshold in the claim (and then not
necessarily) does not meet the stringent standard for inherency.
Thus, we are not convinced that a prepared or stored 6-ACN
will necessarily and inevitably contain the threshold amount of
THA-I claimed in claim 1. We therefore reverse this rejection as
it applies to claims 1, 3-6, and 10-12.
B. Claims 13-16
Although no separate discussion is made by either the
examiner or the appellant in their briefs or answers, we note
that claim 13, which is representative of this grouping, contains
no lower limit on the THA-1, and is written in “comprising”
language which allows for the inclusion of the 6-ACN of Ritz.
We incorporate by reference the discussion in section A
13
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