Appeal No. 2006-0817
Application 10/325,443
col. 11, ll. 36-45 and FIG. 5, and col. 17, Example 5). The compositions include suitable
solvents, including alcohols and ketones (e.g., col. 13, ll. 21-23, and col. 17, Example 5).
In comparing the teachings of Michal ‘285 with appealed claim 1, we find that this
reference would have taught each and every step of the process of claim 1 to one of ordinary
skill in this art, such that this person reasonably following the teachings of the reference would
indeed arrive at the claimed method encompassed by the claim, including each and every
limitation thereof arranged as required therein, without resort to appellants’ disclosure. See
generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-
46 (Fed. Cir. 1989). Furthermore, while the ground of rejection is under § 103(a), as a matter of
fact, Michal ‘285 Example 5 satisfies all of the limitations of claim 1, establishing that claimed
processes encompassed by this claim, as we have interpreted it above, lack novelty. It is well
settled that “anticipation is the ultimate of obviousness.” See In re Baxter Travenol Labs.,
952 F.2d 388, 392, 21 USPQ2d 1281, 1284-85 (Fed Cir. 1991), citing In re Fracalossi, 681 F.2d
792, 794, 215 USPQ 569, 571 (CCPA 1982).
In view of these teachings of Michal ‘285, we cannot agree with appellants that the
reference requires a binding component (brief, e.g., page 4). We also do not agree with
appellants that the solvents used in the coating compositions of the reference that we found
above do not perform the “imbibed” function specified in claim 1 (brief, pages 4-5 and 6-7).
Indeed, Michal ‘285 performs the same steps using the same components and achieves the same
result specified in the claimed process encompassed by claim 1, as we have interpreted this claim
above. 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., In re Spada, 911 F.2d 705, 707, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990); 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.]”); In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 83 (CCPA 1975).
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