Appeal No. 2006-2213 Page 6 Application No. 09/771,151 supersaturated form, or that claim steps (ii), (iii), and (iv) that are undisclosed by Abra et al. are inherent in the document’s disclosure.” Id., at page 9, emphasis in original. Patentability determinations are based on a preponderance of the evidence. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of the evidence with due consideration to persuasiveness of argument.”). As pointed out by Appellants (Brief, page 4), “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). However, discovery of a property inherent to a prior art process does not render that process patentable, even if the prior art did not appreciate the property. Id. at 632-33, 2 USPQ2d at 1054. Thus, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376, 58 USPQ2d 1508, 1514 (Fed. Cir. 2001). Furthermore, “[i]nsufficient prior understanding of the inherent properties of a known composition does not defeat a finding of anticipation.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Based on a preponderance of the evidence, we agree with the examiner that Abra discloses all of the claimed process steps, including the steps of preparing liposomes at selected size intervals, analyzing the liposomes for the presence ofPage: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007