Appeal No. 95-2035
Serial No. 08/083,864
ratio (Brief pages 6-7, 9 and 11-12). However, appellants have not offered any evidence to prove that
Bailey's polymers do not possess the claimed flow ratios. The discovery of a new property or use of a
previously known product, even when the property and use are unobvious from the applied prior art,
cannot impart patentability to the known product. Titanium Metals Corp. v. Banner, 778 F.2d 775,
782, 227 USPQ 773, 777-78 (Fed. Cir. 1985).
Appellants' argument that the examiner is "picking and choosing" from various teachings in
Bailey (Brief page 8) is not well taken based upon the examiner's explicitly stated reliance on the
preferred embodiment of Bailey (Answer page 5, lines 8-10 and the paragraph bridging pages 6-7 in
the Final Office action mailed February 23, 1994).
Appellants further argue Bailey neither anticipates nor enables the product-by-process of claim
12 because Bailey does not describe the catalysts or conditions used for producing blend components
(Brief pages 8-11). However, given Bailey's disclosure of using a high activity titanium/magnesium
catalyst in conjunction with organoaluminum cocatalysts to produce the HMW or LMW polymers
(column 5, lines 27-33; column 3, lines 54-62), we are convinced the Bailey patent disclosure is an
enabling prior art disclosure. A U.S. patent, e.g., Bailey, is presumed valid (35 U.S.C. § 282), and this
presumption of validity applies to the patent's disclosure as well as to each of its claims. In re Spence,
261 F.2d 244, 246, 120 USPQ 82, 83 (CCPA 1958). After reviewing all the evidence of record on
the issue of enablement of the Bailey patent, it is our judgment that appellants have not provided
sufficient evidence to establish that Bailey is a non-enabling disclosure with respect to the production of
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