Appeal No. 2005-1827
Application No. 10/227,761
Appellants argue that Murch fails to consider or address the wash related
damage limitation of the claimed invention. As state above, the limitation of the
claim to which Appellants direct their arguments are to a property resulting from
the components present in the composition. That is, the wash related damage
characteristic of the claimed invention is a result of the components present in
the composition. The recitation of the newly discovered property inherently
possessed by a prior art composition, does not cause a claim drawn to that
composition to distinguish over the prior art. See In re Best, 562 F.2d 1252, 1254,
195 USPQ 430, 433 (CCPA 1977).
The Appellants argue the present inventive compositions decrease wash
related damage to shoes. Specifically Appellants argue “[t]his is a
characteristic of the present composition as real and empirical as, for example,
pH, which is not an ‘ingredient’ per se, but the result of an ingredient selection,
and which is indisputably recognized as a genuine composition limitation and is
regularly afforded patent significance in formulation arts” (Brief, p. 15). We
agree with Appellants that in the formulation arts the selections of ingredients
affect compositional limitations such as pH. In the present case, Appellants
have identified specific benefit agents which produce the claimed wear
damage limitation. As stated above, the specification provides broad
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