Appeal No. 2006-3379 Page 7
Application No. 10/393,549
or a reasonable basis for presuming this structure is present in Kigoshi. To the
contrary, Kigoshi characterizes it as a “solid dispersion” in an apparently amorphous
form. Kigoshi, page 7, lines 30, 42-43 and 50-51. Thus, Kigoshi’s own words conflict
with the Examiner’s conclusion.
As Appellants have recognized, the Examiner’s rejection appears to be grounded
in inherency. Reply Brief, pages 8-9. The prior art may anticipate the claimed subject
matter when the claimed limitations are not expressly found in the reference, but are
inherent to it. Inherency asks whether a subject matter is “necessarily” present in the
prior art reference. “Inherent anticipation requires that the missing descriptive material
is ‘necessarily present,’ not merely probably or possibly present, in the prior art.”
Trintec Indus. v. Top-U.S.A., 295 F.3d 1292, 1295, 63 USPQ2d 1597, 1599 (Fed. Cir.
2002). We find no evidence of record that Kigoshi’s process would necessarily form a
solid amorphous particles surrounded by a matrix material upon cooling as required by
claim 74.
For the foregoing reasons, we conclude that the Examiner has not
provided adequate evidence to establish a prima facie case that each and every
element of claim 74 is described in the prior art. This rejection is also reversed
for dependent claims 75-77 and 84-88.
Obviousness
Claims 78 and 80 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Kigoshi.
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