Appeal No. 2005-0822
Application No. 09/825,612
the characteristic relied on.”); In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990)(“[W]e conclude that the
Board correctly found that the virtual identity of monomers and
procedures sufficed to support a prima facie case of
unpatentability of Spada’s polymer latexes for lack of
novelty.”); see also In re Best, 562 F.2d 1252, 1254-55, 195 USPQ
430, 433-34 (CCPA 1977). That Chang does not fully appreciate
the functions (of argon) as recited in the appealed claims is of
no moment. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362,
1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999)(“Where, as here, the
result is a necessary consequence of what was deliberately
intended, it is of no import that the article’s authors did not
appreciate the results.”); In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990)(“It is a general rule that
merely discovering and claiming a new benefit of an old process
cannot render the process again patentable.”).
With respect to appealed claim 16, the appellants contend:
“Muller’s electrically neutral plasma appears to be in conflict
with the ions - electrically charged particles - of claims 16 and
17.” (Appeal brief at 6.) This argument lacks merit. As
discussed above, the substantial identity in the processes of the
applied prior art and the appealed claims supports the examiner’s
position. The appellants have not discharged their burden of
proving that the functions or results recited in the appealed
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