Appeal No. 2004-0902 Page 5
Application No. 09/780,060
cis-double bond in the chain. The declaration states at paragraph 3 that “[l]ipids
with this stereochemistry are unlikely to crystallize,” citing page 5 of the
specification. In addition, appellants argue that the exemplified compositions in
the present application have 125,000 times more water than the compositions of
Kawada, which are hydrated with a small amount of water and subjected to
freeze thaw cycles.
We recognize that in order for a prior art reference to serve as an
anticipatory reference, it must disclose every limitation of the claimed invention,
either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1432 (Fed. Cir. 1997). As to inherency, the court has noted that
“[u]nder the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.”
Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.2d 1362, 1366, 52 USPQ2d 1303,
1305 (Fed. Cir. 1999) (citations omitted). Moreover, “[w]here . . . the result is a
necessary consequence of what was deliberately intended, it is of no import that
the article’s authors did not appreciate the results.” Mehl/Biophile Int’l Corp., 192
F.2d at 1366, 52 USPQ2d at 1307.
We find that the examiner set forth a prima facie rejection and properly
found that the teachings of Kawada anticipate claims 1-3, 6-9 and 14-19, and the
rejection of those claims under 35 U.S.C. § 102(e) is affirmed.
Kawada teaches compositions 26 and 27, each comprising four
ingredients, to which 200 ml of water were added. See Kawada, column 15.
Composition 26 consists of 120 mg of (2S,3R)-2-oleoylaminooctadecane-1,3-diol
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