Appeal 2007-2485
Application 10/142,750
necessarily reflect on the actual ‘acceleration time’ of a vehicle.
The Examples of the present invention clearly demonstrate a
decrease in acceleration time with the fuel additive of the
present invention. These results are not taught or suggested by
the disclosure of WO 98/16599 [Lin]. (Br. 6).
Appellants’ contentions are not persuasive. Appellants have not
argued that the fuel additive of Lin is not the same as the fuel additives
utilized in the claimed method. Rather, Appellants argue that Lin does not
recognize that improvement in acceleration performance would have
resulted from utilizing the described fuel additive.
Even if the reduction of deposits in the intake valves, for example,
does not translate into an improvement in acceleration performance, a person
of ordinary skill in the art utilizing the fuel additive composition in a
gasoline automobile engine as described by Lin would necessarily have been
practicing the claimed invention. Mehl/Biophile Int'l Corp. v. Milgraum,
192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999) (“[W]here, as
here, the result is a necessary consequence of what was deliberately
intended, it is of no import that the article’s authors did not appreciate the
results.”); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990) (“It is a general rule that merely discovering and claiming a
new benefit of an old process cannot render the process again patentable.”);
accord In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990).
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