Appeal No. 95-0777
Application 07/756,411
alpha and beta to be produced by the method of Carter, much less
know how to isolate and purify a compound such as Gamma. See In
re LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372 (CCPA 1962)(A
reference anticipates a claim if it discloses the claimed
invention “such that a skilled artisan could take its teachings
in combination with his own knowledge of the particular art and
be in possession of the invention.”, emphasis in original).
Even assuming arguendo that the Gamma compound was produced
by Carter, there was no recognition by Carter that any fraction
contained a useful product other than the alpha and beta
compounds in fractions 7 and 11-13, respectively (see column 8,
lines 47-49). Carter does not recognize or appreciate that there
was a 4-hydroxy derivative of alpha, that it was produced by the
Carter process, or how to isolate and purify any such compound if
present.
The examiner states that “unrecognized and unappreciated co-
production of a chemical by a process does not bar a patent on
the later invention of the same product”, citing Silvestri v.
Grant , but limits this principle of law to duplications of an4
invention that are “both accidental and unappreciated” (emphasis
4496 F.2d 593, 596, 181 USPQ 706, 708 (CCPA 1974).
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