Appeal No. 2005-0410
Application No. 09/902,461
administered to a patient since it is clear form [sic, from] their results that it would
treat the claimed disease. . . [Answer, p. 4].
We point out that it is well established that anticipation requires that each and
every limitation set forth in a claim be present, either expressly or inherently, in a single
prior art reference. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed.
Cir. 1999); Celeritas Techs. Ltd v. Rockwell Int’l Corp., 150 F.3d 1354, 1360, 47
USPQ2d 1516, 1522 (Fed. Cir. 1998); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987); Lindemann Maschinenfabrik GMBH
v. American Hoist and Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed.
Cir. 1984). “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 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981).
There is no requirement that an anticipating reference provide specific examples
of the appellant’s invention; however, it must “be enabling and describe the applicant’s
invention sufficiently to have placed it in possession of a person of ordinary skill in the
field of the invention.” In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673
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