the reference of a pharmaceutical composition suitable for the treatment of diarrhea that contains
either compound 33 or 34.” According to appellant (Brief, page 6),
Table 1 of the patent sets forth the calculated and actual K i values for a wide variety of
polyamines. The table was compiled by patentee as a first step in trying to predict
which polyamines would be effective anti-diarrheals. See col. 6, lines 25-60. Table 1 …
includes 34 compounds and, as stated above, merely delineates the K i values for the
listed polyamines.
In this regard, we note that the examiner fails to identify any portion of Bergeron that describes a
composition-comprising compound 33 or 34. We do, however, recognize the examiner’s argument
(Answer, page 4), “the fact that compounds 33 and 34 are not disclosed as having anti-diarrheal
properties does not remove them as references. It is well-established that intended use does not
impart patentability in a composition claim.” See In re Zierden 411 F.2d 1325, 1329, 162 USPQ 102,
104 (CCPA 1969):
A mere statement of a new use for an otherwise old or obvious composition cannot
render a claim to the composition patentable. As we said in In re Lemin, 51 CCPA 942,
326 F.2d 437, 140 USPQ 273, 276 (1964),
Appellants are clearly correct in demanding that the subject matter as a whole
must be considered under 35 U.S.C. 103. But in applying the statutory test, the
differences over the prior art must be more substantial than a statement of the
intended use of an old composition. … It seems to us that the composition …
would be exactly the same whether the user were told to cure pneumonia in
animals with it … or to promote plant growth with it (as here). The directions on
the label will not change the composition….
See also, In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) (“[t]he discovery
of a new property or use of a previously known composition, even when that property and use are
unobvious from the prior art, cannot impart patentability to claims to the known composition”).
Accordingly, claim 1[3] simply requires a composition-comprising compound of formula I and a
pharmaceutically acceptable carrier.
As set forth in Bergeron (column 19, lines 35-32), “[a]ll of the compounds [of Table 1] were
screened for their 48 and 96 hour IC50 values in L1210 cell culture assays.” At column 20, lines
45-50, Bergeron discloses that to determine IC50 values, the polyamine derivatives of Table 1 were
diluted in sterile water and filtered through a 0.2 ?m filter. In our opinion sterile water is a
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