Appeal No. 2006-1226 Page 11
Application No. 10/272,382
Thus, the 1:2 metal-amino acid complexes are serving as costly and usually less
effective pro-nutrients for the 1:1 complexes.” Page 7, lines 14-18.
The statement that the “1:2 metal-amino acid complexes are serving as . . . pro-
nutrients for the 1:1 complexes” appears to be an admission that the complexes defined
by at least instant claim 1 were inherently anticipated by the administration of 1:2 metal-
amino acid complexes in animal feed. Cf. Schering Corp. v. Geneva Pharms., Inc., 339
F.3d 1373, 1379-80, 67 USPQ2d 1664, 1668-69 (Fed. Cir. 2003) (holding compound
claims inherently anticipated where evidence showed prior art compound is converted in
vivo into claimed compound, even though prior art did not disclose claimed compound
or show any awareness of conversion of known compound into claimed compound).
If the pending claims directed to 1:1 metal-amino acid complexes come before
the examiner again, he should consider whether those claims are inherently anticipated
by administration of 1:2 metal-amino acid complexes in animal feed, as evidenced by
the passage quoted from the specification.
Summary
We affirm the rejection of claims 1-5 and 7-9 as anticipated by the Gramaccioli
references, but reverse the rejection of claims 6, 10, 11, and 17 as obvious in view of
the Gramaccioli references and Wagner.
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