Ex Parte Lasic et al - Page 6


              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 of                         







Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007