Appeal No. 2007-0055 Page 6
Application No. 10/053,299
especially relies on Pederson’s disclosure of isoleucine (Answer 5: 20-21) and its use in
the form of a chelate for reducing microbial growth in the oral cavity (Answer 4: 13-16).
Appellants argue that Pederson’s composition requires a metal ion attached to
amino acids by “coordinate covalent bonds,” and therefore do not describe amino acids
in its therapeutic composition. Br. 17 to 19: 9. “There is no disclosure in Pederson that
a particular amino acid, isoleucine, not in the form a chelate with a metal ion, when
applied to eukaryotic cells in a microbial blocking quantity can block microbes from
attaching themselves to cell surfaces.” Reply Br. 2: ¶ 5. They also argue that
Pederson’s metal chelates “functions by an entirely different mechanism” in which the
metal ion reacts with a sulfur-containing amino acid in the oral cavity. Br. 19. In
contrast, Appellants state that it is “the isoleucine compound that blocks microbial
adherence” in the claimed subject matter. Id., 17.
To begin our analysis, we observe that Pederson does not disclose that its metal
amino acid chelate blocks “microbial adherence to a eukaryotic cell surface in a
mammal” as recited in claim 1. Rather, it describes the chelate as interacting with the
odor producing volatile sulfur compounds that cause halitosis. Although the Examiner
does not explicitly state so, it is apparent that he has inferred that microbial adherence
would be blocked inherently when applying Pederson’s metal amino acid chelate to the
oral cavity. Inherency asks whether a subject matter is “necessarily” present in the prior
art reference, “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).
It is the Examiner’s burden to provide “reason to believe . . . that the claimed
subject matter may, in fact, be an inherent characteristic of the prior art.” In re
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