Appeal No. 2004-0450 Page 6
Application No. 09/785,936
Brief) “illustrates that one skilled in the art separately classifies RNA cleaving enzymes
(endoribonucleases) from dephosphorylating enzymes such as acid phosphatase
(dephosphorylases)” (Id.). According to applicants, the BASF publication (Exhibit A of
the Reply Brief) and the Wong declaration (Exhibit B of the Reply Brief) further support
this line of argument. See applicants’ Reply Brief, pages 5 and 8.
Applicants argue that their claimed invention “is not inherently anticipated by the
‘343 patent since the ‘343 patent does not necessarily require the use of an acid
phosphatase enzyme to produce a phytate-free or low-phytate soy protein, and,
therefore, degradation of ribonucleic acids with an acid phosphatase enzyme cannot be
a necessary consequence of, does not naturally flow from, and is not always present in
the method disclosed in the ‘343 patent” (Appeal Brief, page 7, first full paragraph,
emphasis added).
We disagree with that reasoning. “It is a general rule that merely 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). Additionally, even when processes “encompassed by the claims are not entirely
old, the rule is applicable . . . to the extent that the claims and the prior art overlap.” Id.
It appears to us that applicants have merely discovered and are claiming a new
benefit of the method disclosed in the ‘343 patent where Finase is employed as the
enzyme preparation. As stated by applicants:
The present invention resides in the discovery that acid phosphatase
enzymes unexpectedly cleave ribonucleic acids . . . [a]lthough certain
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