Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 16
McDonald preliminary motion 2
[47] McDonald argues that the claims of Miyazaki's 083 application were anticipated by
McDonald's 449 patent (Paper 141 at 15).
A movant under 37 C.F.R. § 1.633(a) Oudgment on the basis of un patentability)
has the burden of proof for any relief it seeks. 37 C.F.R. § 1.637(a).
[481 McDonald's argument for anticipation in his brief hinges on McDonald's contention that
TSF as disclosed in McDonald's 449 patent is inherently the same as the TPO
polypeptide fragments in Miyazaki's 083 claims.
[491 Count 5 explicitly includes Miyazaki 083 claim 18, which is directed to an N-terminal
fragment of a specific TPO polypeptide, as one alternative within its scope.
The Board must determine the patentability (or unpatentability) of claims rather
than counts. In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir.
1993). Where, as here however, the opposing party does not urge the separate
patentability of the other claims, they may be treated as standing or falling together. Id.,
988 F.2d at 1186, 26 USPQ2d at 1060. We treat Miyazaki's 083 claims as standing or
falling with claim 18, which is an alternative of count 5.9
Inherency may not be established by probabilities or possibilities. The fact that a
result may occur in a specific set of circumstances is not sufficient. MEHIJBiophile Int'l
Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir. 1999). A
finding of anticipation by inherent disclosure is appropriate only when the reference
9 McDonald's arguments directed to specific claims are new (cf. Paper 95 at 20-21), but they all
depend on the same finding of inherency. Since we do not find anticipation by inherency for claim 18, the new
arguments directed to the other claims are moot.
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