Appeal No. 2003-0837 Page ~ PAGE ~6~
Application No. 09/078,531
aspirate? Notwithstanding the examiner’s statement that marrow-derived human
mesenchymal stem cells inherently have a fibroblastic morphology, it has only
been demonstrated that adherent marrow-derived mesenchymal stem cells
derived from femoral head cancellous bone or iliac aspirate have a fibroblast-like
morphology.
We recognize that when an anticipatory reference is silent with regard to
an asserted inherent characteristic, the gap in the reference may be filled with by
reference to extrinsic evidence. However, the extrinsic “evidence must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill.” Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264,
1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). The examiner appears to
recognize (Answer, page 12), as set forth in In re Robertson, 169 F.3d 743, 745,
49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999):
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may anticipate if
that element is “inherent” in its disclosure. To establish inherency,
the extrinsic evidence “must make clear that the missing descriptive
matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of
ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991).
“Inherency, however, 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.” Id. at 1269, 20
U.S.P.Q.2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212
U.S.P.Q. 323, 326 (C.C.P.A. 1981).
On this record, the examiner has made very specific selections from the
genus of options set forth in Grande. In our opinion, this picking and choosing
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