“It seems to us that the composition would be exactly the same whether the user was told to cure pneumonia with it or to promote plant growth”
How later courts described this case
- “It seems to us that the composition would be exactly the same whether the user was told to cure pneumonia with it or to promote plant growth”
- “[M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the new composition patentable”
- "[M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable."
Written by the judges who cited it.
The opinion
BALDWIN, Judge
(dissenting in part).
As to composition claim 6, I agree with the majority opinion and decision to affirm.
As to method claims 1 and 2, I would affirm the 35 U.S.C. § 102 anticipation rejection. Claims 1 and 2 are broad enough to read on the very slightest removal and prevention of alluvium deposits in water systems. Thus, if the “industrial waters” of the French patent contain alluvium, even in a very slight amount, 1 then the process of that patent inherently anticipates appellant’s process as claimed here. Viewed in this manner, I do not fee] that the presently claimed process possesses the element of novelty required of a “new use of an old composition.” Perhaps appellant has discovered an unrecognized characteristic, property, or advantage of an old process for treating industrial waters by the addition of a known composition; nevertheless, in my view claims 1 and 2 do not define solely a new process. The obviousness of a method for removing and preventing substantial alluvium deposits in water systems using unfiltered industrial water containing a specified minimum amount of alluvium, is quite a separate and distinct issue from the lack of novelty or inherent anticipation of the process claimed here. The difficulty in this case arises from the breadth of the claims, not the obviousness of the disclosed method. Therefore, as to claims 1 and 2 also, I would affirm.
. It would seem that some amount of “alluvium,” as defined by appellant, is even present in most drinking water.