Appeal No. 2004-0973
Application No. 09/898,155
494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974). Moreover, “[M]ere
statement of a new use for an otherwise old or obvious composition cannot render a
claim to the composition patentable." In re Zierden, 411 F.2d 1325, 1328, 162 USPQ
102, 104 (CCPA 1969). No provision has been made in the patent statutes for
granting a patent upon an old product based solely upon discovery of a new use for
such product. In re Benner, 174 F.2d 938, 942, 82 USPQ 49, 53 (CCPA 1949).
Therefore, we agree with the examiner that the composition of claim 16 is known
and disclosed in Hoffman. The discovery of a new property or use for this composition,
such as its use as a sleep inducing antacid, even when this property and use are
unobvious from prior art, can not impart patentability to claims to the known
composition. The rejection of claims 16, 17 and 19-25 under 35 U.S.C. 102(e) for
anticipation in view of Hoffman is affirmed.
35 U.S.C. 103(a)
Claims 16 and 18 stand rejected under 35 U.S.C. 103(a) as obvious in view of
Hoffman.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). It is well-established that the
conclusion that the claimed subject matter is prima facie obvious must be supported by
evidence, as shown by some objective teaching in the prior art or by knowledge
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