Interference 103,579
otherwise old composition . . . do not differentiate the claimed
composition from those known to the prior art”). In re
Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971), instructs
at 212-213, 169 USPQ at 229:
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed
by things in the prior art, does not cause a claim drawn
to those things to distinguish over the prior art.
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 claiming a new benefit of an old process cannot
render the process again patentable. . . . . While
the processes encompassed by the claims are not
entirely old, the rule is applicable here to the
extent that the claims and prior art overlap.
Similarly, if the DNA sequences of the antisense constructs
Visser uses to genetically engineer potato plants by unspecified
established procedures to produce essentially amylose free starch
structurally are not the same, or substantially the same, as the
DNA sequences of the antisense constructs Hofvander describes for
use in genetically engineering potato plants by the same, or
substantially the same, unspecified established procedures
to suppress amylose formation in potato tubers, the common
terminology the parties’ respective claims employ to define their
function and/or utility does not establish that the subject
matter one claims is patentably indistinct from the subject
matter the other claims. See In re Dillon, 919 F.2d 688, 695,
-58-
Page: Previous 51 52 53 54 55 56 57 58 59 60 61 62 63 64 65 Next
Last modified: November 3, 2007