Appeal No. 2006-1389 Page 6
Application No. 09/912,471
preparations” (id., page 13, citing MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362,
1365, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999), inter alia).
We disagree with appellants’ reasoning and conclusion. First, the fact that a
person of ordinary skill in the art might work within the broad disclosure of Simell without
using an acid phosphatase does nothing to negate Simell’s explicit description of
treating soy protein materials with FinaseŽ. See e.g., Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1376, 77 USPQ2d 1321, 1326 (Fed. Cir. 2005) (“This court
rejects the notion that one of these [fourteen] ingredients cannot anticipate because it
appears without special emphasis in a longer list.”); In re Petering, 301 F.2d 676, 682,
133 USPQ 275, 280 (CCPA 1962) (“[E]ach compound within the limited class in [the
reference] . . . has been described . . . within the meaning of 35 U.S.C. 102(b)”).
Therefore, we find, as did the examiner, that Simell explicitly describes treatment of soy
protein isolates with FinaseŽ, a commercial preparation containing phytase and acid
phosphatase.
That being the case, Simell’s “deliberate intent” in treating a soy protein slurry
with FinaseŽ is beside the point. “It is a general rule that merely discovering and
claiming a new benefit of an old process cannot render the process again patentable.”
In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). “[T]he
discovery that acid phosphatase enzymes unexpectedly cleave ribonucleic acids, and
therefore can be used to degrade and reduce the concentration of ribonucleic acid
materials in vegetable protein materials” in addition to “degrading phytic acid and
phytates” (Specification, page 4), “corresponds to a claimed new benefit or
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