Appeal No. 1999-0031
Application No. 08/168,438
Appellants argue that Mohr “fails to recognize or teach the removal of
photoproducts generated by irradiating the viral inactivating agent. . . .
Appellants were the first to discover the advantageous removal of these
products.” Appeal Brief, page 14.
It is true that Mohr does not discuss removal of methylene blue
photoproducts using biobeads. However, the instant specification does not
disclose that any special treatment of biobeads is required to enable the
biobeads to adsorb methylene blue photoproducts. Thus, it reasonably appears
that such adsorption is an inherent property of biobeads. In addition, we note
that the instant specification characterizes biobeads as useful for “adsorbing
organics” (page 10, line 6), indicating that their affinity is not specific to
methylene blue. Also, Mohr states that biobeads are useful for removing
methylene blue “and other phenothiazine dyes,” again indicating that their affinity
is not limited to methylene blue. Thus, those skilled in the art would reasonably
expect that the process disclosed by Mohr inherently removed photoproducts of
methylene blue from a treated blood product.
Discovery of a property inherent to a prior art process does not render that
process patentable, even if the prior art did not appreciate the property. See
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 630, 2 USPQ2d 1051, 1054
(Fed. Cir. 1987). See also In re Woodruff, 919 F. 2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990) (“It is a general rule that merely discovering and
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