Appeal No. 95-4493
Application 07/756,646
has an epimer, that the epimer was produced by the process of
Carter, or how to isolate and purify any such epimer 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 an5
invention that are “both accidental and unappreciated” (emphasis
examiner’s, answer, page 6). The examiner concludes that the
production of the claimed compound, though unappreciated, is “by
no means accidental” (answer, page 6).
Contrary to the examiner’s interpretation, any production of
alpha-1 by Carter would be considered accidental and
unappreciated. Carter never recognized that epimers of alpha
exist or how to isolate and purify them. As conceded by the
examiner, any production of alpha-1 by Carter was unappreciated
(examiner’s response to reply brief, page 1). This result may
also be considered “accidental”, i.e., not intended and not
appreciated. See Eibel Process Co. v. Minnesota & Ontario Paper
Co., 261 U.S. 45, 43 S. Ct. 322 (1923). A prior achievement of a
product may be considered accidental if it was a consistent
5496 F.2d 593, 596, 181 USPQ 706, 708 (CCPA 1974).
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