Appeal No. 2006-2428 Page 11
Application No. 10/362,500
being anticipated under 35 U.S.C. § 102(b). Moreover, because Appellants do not
argue dependent claims 3, 5, and 6 separately from independent claim 1, we affirm the
anticipation rejection with respect to those claims as well.
As discussed supra, appealed claim 2 requires the chlorinating step to be carried
out in acetonitrile. In rejecting claim 2 as anticipated by Uneme, the examiner points out
that the “[c]ompound of formula I may be isolated by crystallization (col. 9, lines 19-24)
or the second step may be performed without isolating compound I and the reaction
may [be] carr[ied] out in acetonitrile. See col. 6, lines 19-34.” Answer, page 3. The
examiner further urges that Uneme “teaches that the assay may be performed in a one-
pot process and acetonitrile may be used as solvent. Even if applicant adds acetonitrile
in step (a) such would have carried over to step (b) if the process is performed
continuously (one-pot) as in the instant claim 3.” Id. at pages 5-6.
We agree with Appellants that Uneme does not anticipate claim 2. We note that
“a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are nonetheless inherent in it.” Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999). However,
the examiner cannot establish 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
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