Appeal No. 1996-2910
Application 07/825,488
Van Lommen’s antihypertensive compound 84 is a mixture of four
stereoisomers: RSSS, SRRR, RSRR and SRSS. Because the RSRR and SRSS
stereoisomers do not materially affect blood pressure reducing or antihypertensive
activity, it appears that they are not excluded from the composition of claim 26. On
return of the application, we recommend that the examiner reevaluate the patentability
of claim 26, and any claims depending therefrom, under 35 U.S.C. § 102 in light of Van
Lommen. Specifically, the examiner should consider whether claim 26 “reads on” Van
Lommen’s compound 84 taking into account the appropriate principles of claim
interpretation and the foregoing remarks.
It is axiomatic that one cannot patent what is old. If, on return of this application
to the examining group, the examiner determines that any claim or claims are described
by Van Lommen within the meaning of 35 U.S.C. § 102, we emphasize that “[t]he
discovery of a new property or use of a previously known composition, even when that
property and use are unobvious from the prior art, can not impart patentability to claims
to the known composition.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990) (citations omitted). In other words, if the examiner determines that the
claimed subject matter is described by Van Lommen under 35 U.S.C. § 102,
declaration evidence establishing unexpectedly superior results would be unavailing to
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007