Appeal No. 2006-1245 Page 16
Application No. 10/294,106
combined with the very low threshold concentration required to induce inhibition, we find
that Thakur inherently provides the claimed withanolides to a mammal in amounts
effective to selectively inhibit COX-2. Thakur therefore anticipates claims 1, 3, 5, and
15.
To summarize, “a prior art reference may anticipate when the claim limitations
not expressly found in that reference are nonetheless inherent in it.” In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002).
Moreover, “the discovery of a previously unappreciated property of a prior art
composition, or of a scientific explanation for the prior art’s functioning, does not render
the old composition patentably new to the discoverer. . . . This same reasoning holds
true when it is not a property, but an ingredient, which is inherently contained in the prior
art.” Atlas Powder, 190 F.3d at 1347, 51 USPQ2d at 1947 (emphasis added). Thus,
the fact that Appellants may have recognized novel compounds within prior art W.
somnifera compositions cannot render methods of using those compositions patentable,
when the prior art discloses using compositions encompassed by the claims according
to the claimed steps. See Cruciferous Sprout, 301 F.3d 1343, 64 USPQ2d 1202 (claims
to therapeutic methods of administering sprout compositions held anticipated due to
inherent presence of claimed therapeutic agent therein).
Lastly, we note that “where the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.” In re Swinehart, 439 F.2d 210,
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