Appeal No. 2006-2920 Page 4
Application No. 10/813,501
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-6, 77 USPQ2d 1321, 1325-6 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). To establish
inherency, the extrinsic evidence “must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.” In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (internal
citations omitted). To anticipate, every element and limitation of the
claimed invention must be found in a single prior art reference, arranged as
in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research
Foundation v. Genentech, Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
We consider first the examiner’s rejection of claims 1-7 as being
anticipated by Asada. Since Appellants’ arguments with respect to this
rejection have treated these claims as a single group which stand or fall
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007