Appeal No. 2006-1226 Page 5
Application No. 10/272,382
[zinc or copper] and a dicarboxylic alpha amino acid [glutamate]”; each of the
references therefore anticipates instant claim 1.
Appellants argue that the Gramaccioli references do not anticipate because they
do not teach a utility for the disclosed metal/amino acid complexes. See the Appeal
Brief, page 4, and Abdel-Monem declaration,3 ¶ 9.
We do not find this argument persuasive. “[I]t is beyond argument that no utility
need be disclosed for a reference to be anticipatory of a claim to an old compound.” In
re Schoenwald, 964 F.2d 1122, 1124, 22 USPQ2d 1671, 1673 (Fed. Cir. 1992). See
also Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326, 75 USPQ2d
1297, 1302 (Fed. Cir. 2005) (“[A] prior art reference need not demonstrate utility in order
to serve as an anticipating reference under section 102.”).
Appellants argue, however, that the present case is distinguished from
Schoenwald (and, presumably, more recent cases saying the same thing) in that “the
Gramaccioli references are ambiguous as to their teaching. They teach only an
empirical formula (CuC5H[7]NO4.2H2O; and ZnC5H7NO4.2H2O). Even the Schoenwald
case says, ‘the mere naming of a compound may not be enough for anticipation’.”
Appeal Brief, page 4.
Appellants assert that “[t]he Gramaccioli references do not provide any details on
the preparation” of the disclosed compositions, such as the yield, purity or physical or
chemical properties. Id.; Reply Brief, pages 2-3; Abdel-Monem declaration, ¶¶ 4 and
11. Appellants reason that “it is well known that the reaction of metal salts and amino
3 Declaration submitted under 37 CFR § 1.132 by Mahmoud M. Abdel-Monem, received October 15,
2004.
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