Appeal 2007-2864
Application 10/747,798
The present invention is not directed to obtaining patent
protection of a method of inhibiting the growth of cells that are
not infected with HPV. That the claimed method might be
applied in the treatment of cells not infected by HPV is not
relevant to the issue of whether Clayman anticipates the
claimed invention. The issue is whether it would be inherent
that every cancer set forth in Clayman would be infected with
HPV. Clayman provides no explicit teaching. In fact, Oda and
Flaitz support the notion that it is NOT inherent that every
cancer set forth in Clayman would be infected with HPV.
(Id.) Appellant cites MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d
1362, 1365 (Fed. Cir. 1999), for the proposition that inherency is not
established by probabilities or possibilities, and that occasional results are
not inherent (Br. 7). Thus, Appellant asserts, “the mere possibility that one
of the lesions set forth in Clayman might contain HPV DNA is not sufficient
to establish inherent anticipation.” (Id.)
Appellant essentially appears to be arguing that as Oda and Flaitz do
not teach that every malignancy of the cervix or oral cavity involves cells
that are infected with HPV, Clayman cannot anticipate the claimed subject
matter. That is not the standard, however, by which anticipation is
determined.
Inherent anticipation does not require intent or recognition that a prior
art process achieve a result which is claimed. “Inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in the art.
Artisans of ordinary skill may not recognize the inherent characteristics or
functioning of the prior art.” MEHL/Biophile, 192 F.3d at 1365, 52 USPQ2d
at 1305-06.
As noted by the Examiner, Clayman teaches a clinical protocol for
treating humans with premalignancies of squamous epithelium in the oral
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