Appeal No. 2003-1721 Page 4
Application No. 09/226,143
ordinary skill in the art at the time the invention was made to expect the formation of
aggregates.” (Answer, pp. 4 and 5).
The Examiner is impermissibly mixing the concepts of obviousness and inherency. A
conclusion of obviousness must be based on knowledge within the art. Obviousness cannot be
based on that which is unknown and, here, there is no evidence that those of ordinary skill in the
art had any reason to expect the aggregate form would be beneficial or even equivalent for the
uses described in primary references. The naked fact that it was known, according to the
specification, that aggregates can occur under some circumstances does not provide a suggestion
to formulate the compositions of the primary references in such a way that those compositions
contain aggregates.
Inherency on the other hand, does not deal with expectations. Whether one knows that
the carotenoids are aggregated or not, if they are actually aggregated when one follows the
directions of the prior art, they are present. Patentability cannot rest on the lack of description of
a property inherently present in a prior art composition or process. But, importantly, the initial
burden is on the examiner to establish that there is a reason to believe aggregates are
“necessarily present”, not merely probably or possibly present in the prior art compositions. In
re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977); see also Trintec Industries Inc.
v. Top-U.S.A. Corp., 295 F.3d 1292, 1295, 63 USPQ2d 1597, 1599 (Fed. Cir. 2002). The
examiner
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