Appeal No. 2005-1516
Application No. 09/182,645
however, as discussed above we do not find that the examiner has established a prima
facie case of anticipation based on Ning under the principles of inherency based on
Tanuma 1 and 2. In addition, we point out that the coffee-tasting tea of Ning includes
multiple ingredients. That is, addition to ginseng, the tea of Ning further comprises
Acanthopanax root, or Acanthopanax Bark, or Acanthopanax extract, pilose antler blood
or pilose antler extract, wolfberry fruit, sugar and citric acid. Ning, claim 1. Thus, it is
not clear that lignin glycoside from the ginseng tea of Ning is present in an effective
amount.
Thus, the examiner has not properly established a prima facie case of
anticipation based on the principles of inherency. We remind the examiner that an
inherent limitation is one that is necessarily present; inherency is not established by
“probabilities or possibilities.” Scaltech, Inc. v. Retec/Tetra, LLC., 178 F.3d 1378, 1384,
51 USPQ2d 1055, 1059 (Fed. Cir. 1999). As set forth in Continental Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991)
“The mere fact that a certain thing may result from a given set of circumstances is not
sufficient.” Instead, the natural result flowing from the method of preparing the tea of
Wang or the coffee-tasting tea of Ning must result in a composition comprising an
effective amount of the claimed lignin glycoside. We do not find the evidence of record
supports that natural result on its face.
Therefore, the rejection of the claims for anticipation over Wang, Ning and
Tanuma 1 and 2 is reversed.
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