Appeal No. 2002-2142 Page 7
Application No. 09/276,858
As we find that anticipation is limited to the subject matter of claims 1-4, 9-11, 17, and
18, we address the arguments for those claims only.
Appellants argue that they have overcome problems not recognized and not solved by the
Wukusick patent (Brief at 7-8). “A reference may be from an entirely different field of endeavor
than that of the claimed invention or may be directed to an entirely different problem from the
one addressed by the inventor, yet the reference will still anticipate if it explicitly or inherently
discloses every limitation recited in the claims.” In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1432 (Fed. Cir. 1997). “[M]erely discovering and claiming a new benefit of an
old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Here, there is reason to believe that casting the
preferred and most preferred compositions of Wukusick as taught by Wukusick will result in a
reduction in scale and grain recrystallization as required by independent claims 1, 9, and 17.
Moreover, the fact that Wukusick does not discuss the same problems allegedly
discovered by Appellants does not mean the claimed process is new as required by the patent
statute. See 35 § U.S.C. 101(2001)(“Whoever invents any new ... process or any new ...
improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of
this title.)(emphasis added). A material and its properties are inseparable. In re Papesch, 315
F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963). In obedience with the laws of nature, adding the
amount of carbon specified by Wukusick will result in the properties desired by Appellants. “A
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