Appeal No. 1995-5117
Application No. 08/067,154
transmission minimum and voltage holding ratio are not taught
and would not have been suggested by the claims of Rieger. As
properly indicated by the examiner, however, these
characteristics would have been inherently possessed by those
compounds embraced within claim 1 of Rieger which correspond
to the compounds embraced within appealed claim 4. Stated
otherwise, the discovery of an unknown property of previously
disclosed compounds or compositions cannot impart
patentability to claims directed to such compounds or
compositions. In re May, 574 F.2d 1082, 1089, 197 USPQ 601,
607 (CCPA 1978) and In re Spada, 911 F.2d 705, 708-709, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990).
As a consequence of the above analysis, we will sustain
the examiner’s obviousness-type double patenting rejection of
appealed claims 4, 5 and 12 as being unpatentable over claims
1 and 7 of the Rieger patent.
Arguments similar to those addressed earlier are
presented by the appellants concerning the examiner’s section
103 rejection based on Weber. While we appreciate that
Weber’s disclosure is generic in nature, the fact remains that
compounds defined by formula IIc of Weber (see columns 5 and
6
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