Appeal No. 2004-0973
Application No. 09/898,155
DISCUSSION
35 U.S.C. § 102(e)
Claims 16, 17 and 19-25 stand rejected under 35 U.S.C. 102(e) as anticipated
by Hoffman.
According to the examiner, Hoffman teaches a composition that contains 1000
mg. of calcium carbonate and 250, 500, or 1000 mg. of valerian extract (see column 13,
lines 42-48). The valerian extract contains at least 0.5% active ingredients (see column
9,lines 58-60). Answer, page 3.
The examiner admits that the reference does not specifically teach that the
composition functions as a sleep inducing antacid compound. Id. The examiner
argues that since the composition of the reference is the same as the claimed
composition, the reference composition would inherently have to have the same side
effects if applicant's invention functions as claimed. Id.
It is well settled that the recitation of a new intended use for an old product does
not make a claim to that old product patentable. In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a
previously known composition, even when that property and use are unobvious from
prior art, can not impart patentability to claims to the known composition."). A
composition claim reciting a newly discovered property of an old alloy did not satisfy
section 102 because the alloy itself was not new. Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) and In re Pearson,
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007