Ex Parte Yoo - Page 7

                 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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