Appeal No. 2005-2465
Application 10/293,373
15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990) (“The Board held that the compositions claimed by
Spada ‘appear to be identical’ to those described by Smith. While Spada criticizes the usage of
the word ‘appear’, we think that it was reasonable for the PTO to infer that the polymerization by
both Smith and Spada of identical monomers, employing the same or similar polymerization
techniques, would produce polymers having the identical composition.”).
We are not convinced that appellants have carried their burden. We cannot agree with
appellants that the absence of disclosure in British Petroleum with respect to asphaltenes, polars,
and organically bound oxygen groups in the starting materials or the resid, and pre-heating the
oxidized resid prior to charging the delayed coking drum, patentably distinguishes the claimed
process over that of the reference Example (brief, pages 9-10). We discussed above the
teachings of British Petroleum and the inferences that one of ordinary skill in the art would have
found therein with respect to each of the claim limitations addressed by appellants’ arguments.
In any event, the fact that the reference does not describe the disclosed process or its product in
the same manner as appellants does not alone distinguish the claimed invention. Indeed, it is
well settled that appellants’ elucidation of the mechanism of an old process or discovery of a
new benefit of that process does not render the old process again patentable simply because
those practicing the process may not have appreciated the mechanism or 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.
Appellants submit that the Siskin declaration shows “that the amount of asphaltenes,
polars, and organically bound oxygen groups in the resid of the [British Petroleum] reference are
not increased during the treatment with air sufficient to form ‘free flowing’ shot coke during
coking” as claimed (brief, pages 9-10). The examiner finds that “the declaration data only
compared shot coke and do not show any amount of asphaltenes, polars, and organically bound
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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