Appeal 2006-2115
Application 09/862,077
property or benefit of an old composition or process will not, without more,
be dispositive of the nonobviousness of the claimed invention over the
reference. See, e.g., In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934,
1936 (Fed. Cir. 1990); In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d 775, 782-
83, 227 USPQ 773, 779 (Fed. Cir. 1985). In other words, the discovery of a
new benefit of an old process or property of an old product does not render
that process or product again patentable simply because those practicing the
process or using the product may not have appreciated the results produced
thereby. See, e.g., 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, 82-83
(CCPA 1975) (“Appellants have chosen to describe their invention in terms
of certain physical characteristics . . . . Merely choosing to describe their
invention in this manner does not render patentable their method which is
clearly obvious in view of [the reference].” (citations omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Lowe, Franzen and Wheeler with Appellants’
countervailing evidence of and argument for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1 through 3,
5 through 9, 11 through 16, and 19 through 22 through would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
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