Appeal No. 2004-2047
Application 09/817,419
Fergason. Accordingly, on this record one of ordinary skill in this art routinely following the
combined teachings of Whitney and Fergason would have reasonably arrived at the claimed
methods and products encompassed by appealed claims 3, 22 and 31, including each and every
element thereof arranged as required therein, without resort to appellants’ specification, even
though this person would not have recognized that such result can increase the total dietary fiber
of the grain. Therefore, the burden is on appellants to establish by effective argument or
objective evidence that the claimed methods and products patentably distinguish over the
disclosure of the combined references even though the rejection is based on § 103. See, e.g.,
Best, 562 F.2d at 1254-56, 195 USPQ at 432-34 (CCPA 1977); Skoner, 517 F.2d at 950-51,
186 USPQ at 82-83.
Appellants have not carried this burden. Indeed, it is well settled that appellants’
discovery of a new benefit of an old process or product does not render an old process or product
again patentable simply because those practicing the process by which the product is obtained
may not have appreciated the results produced thereby. See, e.g., Spada, 911 F.2d at 707,
15 USPQ2d at 1657; In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1936 (Fed. Cir.
1990); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983) (“[I]t is . . . irrelevant that those using the invention may not have appreciated the
results[,] . . . [otherwise] it would be possible to obtain a patent for an old and unchanged
process. [Citations omitted.]”); Skoner, 517 F.2d at 950, 186 USPQ at 83.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Whitney and Fergason
with appellants’ countervailing evidence of and argument for nonobviousness and conclude that
the claimed invention encompassed by appealed claims 3, 6, 7, 9 and 16 through 41 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
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