Appeal No. 2002-1575 Page 4
Application No. 08/945,901
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (CAFC 1986). It is, however,
well established that an anticipating reference “must disclose every element of
the challenged claim and enable one skilled in the art to make the anticipating
subject matter.” PPG Industries, Inc. v. Guardian Industries Corp., 75 F.3d 1558,
1566, 37 USPQ2d 1618, 1624 (Fed. Cir. 1996). As set forth in Continental Can
Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269, 20 USPQ2d 1746,
1749-50 (Fed. Cir. 1991) (citations omitted), inherency “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.” Instead, the natural result
flowing from the method disclosed in Mita must result in the performance of the
questioned function.
In this regard, appellants point out (Brief, page 7), “[i]t has been reported[1]
that a compound which exhibits a corneal wound healing effect by a stimulative
effect on the proliferation of corneal keratocytes does not always exhibit a
strength of a wound closure site after healing.” Therefore, appellants conclude
that the stimulative effects on the proliferation of corneal keratocytes [disclosed
by Mita, column 1, lines 26-31] and effects on the strength of a wound closure
site are not inherently the same. The examiner does not address this argument.
We remind the examiner that an inherent limitation is one that is
necessarily present; invalidation based on inherency is not established by
“probabilities or possibilities.” Scaltech, Inc. v. Retec/Tetra, LLC., 178 F.3d
1378, 1384, 51 USPQ2d 1055, 1059 (Fed. Cir. 1999). Instead, it is the
1 The Cornea: Transactions of the World Congress on the Cornea III, pp. 15-21 (H. Dwight
Cavanagh ed., Raven Press, New York)(1988).
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