Appeal No. 2006-1245 Page 11
Application No. 10/294,106
inherency merely by demonstrating that the asserted limitation is probable or possible.
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) (“The mere fact that
a certain thing may result from a given set of circumstances is not sufficient [Citations
omitted.] If, however, the disclosure is sufficient to show that the natural result flowing
from the operation as taught would result in the performance of the questioned function,
it seems to be well settled that the disclosure should be regarded as sufficient.”)
(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939)
(emphasis and bracketed material in original).
With these principles in mind, we believe that there are serious questions with
respect to the prima facie case of anticipation advanced by the examiner. Directly
contrary to the examiner’s assertion that “an extract from Withania somnifera is
administered to a patient” (Answer, page 5), at least two of the cited references simply
do not disclose the administration of W. somnifera extracts to patients. See, e.g., Atta-
ur-Rahman, (page 689, disclosing the “medicinal interest” of the plant, with no mention
of administration of any “extract” to a patient); see also Kashinath (no mention of the
word “extract” in the abstract provided).
Moreover, regarding those references actually disclosing administration of
extracts, the examiner does not refer to any extrinsic evidence explaining why the prior
art extracts, made from different parts of the plant, using solvents different than used in
Appellants’ specification, would necessarily contain the claimed withanolides. In our
view, because the cited references disclose a number of distinct extracts prepared from
different parts of the plant, using a variety of different solvents and fractionation
techniques, the simple assertion that the prior art extracts are from “the same exact
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