the microwave radiation effective to split the
cellular structure of the biological
material;
intermittently applying reduced pressure within the enclosure
during the application of microwave radiation
to further split the cellular structure of the biological
material induced by application of the
microwave radiation;
hydrodistilling the natural product
by conveying
the natural product and
the water vapor coming from the biological material
as an azeotropic: mixture; and
separating the natural product from the azeotropic mixture.
At least two limitations present in Mengal's claims are not expressly taught by the Par6
patents. At least one of these limitations is present in each of Mengal's claims. The first requires
the intermittent application of reduced pressure (or vacuum) during the exposure to microwaves.
Mengal Claims 1-5, 8, 9, 11, 14-21, 23-30 and 32 include this limitation. The other limitation
specifies conveying the natural product and water volatilized by the application of microwaves as
an azeotropic mixture and separating the product form the azeotrope. This limitation is present in
Mengal Claims 20, 2 1, and 23-32.
a. Intermittent Application of Reduced Pressure
With respect to the intermittent application of vacuum or reduced pressure during the
application of microwaves, Par& argues that this limitation is inherent in Example 2 of both Par6
patents.
1) Inherency
Inherency is a question of fact. In re Schreibgr, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997); In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982). To
establish inherency, extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the disclosure and that it would be so recognized by persons of ordinary skill.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264,1268-69,20 USPQ2d 1746,1749 (Fed. Cir.
1991). Proof of inherency requires evidence that the "necessary and only reasonable construction
to be given the disclosure by one skilled in the art is one which will lend clear support to ...[the]
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