Appeal 2007-0320
Application 09/945,339
rather than relying on Sykes to provide a reason for combing teachings to
meet the claim limitations, the Examiner appears to be relying on the
reference as evidence that fludarabine treated T cells retain their ability to
divide and proliferate. See In re Samour, 571 F.2d 559, 563, 197 USPQ 1,
4-5 (CCPA 1978).
Finally, the Examiner asserts that Waller “uses fludarabine treatment
to prevent treated cells from causing GvHD[,] not to reduce T cell
population” (Answer 7), and “it can be assumed [Waller’s] method will
obviously perform the claimed process” (id. at 9).
Thus, the Examiner’s underlying rationale appears to be that the
present Specification teaches that the mononuclear cells need only retain a
minimal ability to proliferate (i.e., less than 10% of their original capacity),
and Waller really teaches that the mononuclear cells can retain the ability to
proliferate a little, as well. In other words, the Examiner’s rationale appears
to be that both Waller and the present Specification teach the same thing,
and that Waller anticipates the claimed invention.
A prior art reference may anticipate even when claim limitations are
not expressly found in that reference, but are nonetheless inherent in it. See,
e.g., Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 51 USPQ2d 1943
(Fed. Cir. 1999); Titanium Metals Corp. v. Banner, 778 F.2d 775, 227
USPQ 773 (Fed. Cir. 1985). Moreover, “when considering a prior art
method, the anticipation doctrine examines the natural and inherent results in
that method without regard to the full recognition of those benefits or
characteristics within the art field at the time of the prior art disclosure.”
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