Appeal No. 98-2123
Application No. 08/326,669
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990): “The
discovery of a new property or use of a previously known
composition, even when that property and use are unobvious
from prior art, can not impart patentability to claims to the
known composition.”
With respect to representative claim 10 the appellants
argue that Grover's front panel 15 cannot be considered to
have a display window because it is covered by an opaque layer
41. This argument is not commensurate with the scope of the
claimed subject matter since there is no requirement in
representative claim 10 that the "front panel" have a display
window. Instead, this claim more broadly requires that the
"card" have such a display window. In Grover, both the front
panel 15 and back panel 16 are transparent (see col. 4, lines
20 and 21). Thus, even though Grover's front panel 15 may be
covered by an opaque security cover 41, the back panel 16 is
not. Accordingly, the compartments 53 of Grover's card can be
considered to form a transparent display window as claimed
(albeit only visible in the back panel 16).
With respect to claim 13, the appellants argue that in
Grover any sleeve must be formed from something that is a part
11
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