Process Claims

I.

PROCESS CLAIMS — PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE DEVICE

CARRIES OUT THE PROCESS DURING NORMAL OPERATION

Under the principles of inherency, if a prior art device, in its

normal and usual operation, would necessarily perform the method claimed, then the

method claimed will be considered to be anticipated by the prior art device. When the

prior art device is the same as a device described in the specification for carrying

out the claimed method, it can be assumed the device will inherently perform the

claimed process.

In re King,

801 F.2d 1324, 231 USPQ 136 (Fed.

Cir. 1986) (The claims were directed to a method of enhancing color effects produced

by ambient light through a process of absorption and reflection of the light off a

coated substrate. A prior art reference to

Donley

disclosed a

glass substrate coated with silver and metal oxide 200-800 angstroms thick. While

Donley disclosed using the coated substrate to produce architectural colors, the

absorption and reflection mechanisms of the claimed process were not disclosed.

However, King’s specification disclosed using a coated substrate of Donley’s

structure for use in his process. The Federal Circuit upheld the Board’s finding that

“Donley inherently performs the function disclosed in the method claims on appeal

when that device is used in ‘normal and usual operation’” and found that a

prima facie

case of anticipation was made out.

Id.

at 138, 801 F.2d at 1326. It was up to applicant to prove

that Donley’s structure would not perform the claimed method when placed in ambient

light.). See also

In re Best,

562 F.2d 1252, 1255, 195 USPQ 430,

433 (CCPA 1977) (Applicant claimed a process for preparing a hydrolytically-stable

zeolitic aluminosilicate which included a step of “cooling the steam zeolite ... at a

rate sufficiently rapid that the cooled zeolite exhibits an X-ray diffraction pattern

....” All the process limitations were expressly disclosed by a U.S. patent to

Hansford except the cooling step

62 F.2d 1252, 1255, 195 USPQ 430,

433 (CCPA 1977) (Applicant claimed a process for preparing a hydrolytically-stable

zeolitic aluminosilicate which included a step of “cooling the steam zeolite ... at a

rate sufficiently rapid that the cooled zeolite exhibits an X-ray diffraction pattern

....” All the process limitations were expressly disclosed by a U.S. patent to

Hansford except the cooling step. The court stated that any sample of Hansford’s

zeolite would necessarily be cooled to facilitate subsequent handling. Therefore,

rejections under

35

U.S.C. 102

and

103

were properly made. Applicant

had failed to introduce any evidence comparing X-ray diffraction patterns showing a

difference in cooling rate between the claimed process and that of Hansford or any

data showing that the process of Hansford would result in a product with a different

X-ray diffraction. Either type of evidence would have rebutted the rejections under

35 U.S.C.

102

. A further analysis would be necessary to determine if the

process was nonobvious under

35 U.S.C. 103

.);

Ex

parte

Novitski,

26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (The

Board rejected a claim directed to a method for protecting a plant from plant

pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of

P. cepacia.

A U.S. patent to

Dart

disclosed

inoculation using

P. cepacia

type Wisconsin 526 bacteria for

protecting the plant from fungal disease. Dart was silent as to nematode inhibition

but the Board concluded that nematode inhibition was an inherent property of the

bacteria. The Board noted that applicant had stated in the specification that

Wisconsin 526 possesses an 18% nematode inhibition rating.).

II.

PROCESS OF USE CLAIMS — NEW AND NONOBVIOUS USES OF OLD STRUCTURES AND

COMPOSITIONS

MAY

BE PATENTABLE

The discovery of a new use for an old structure based on unknown

properties of the structure might be patentable to the discoverer as a process of

using.

In re Hack,

245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA

1957)

specification that

Wisconsin 526 possesses an 18% nematode inhibition rating.).

II.

PROCESS OF USE CLAIMS — NEW AND NONOBVIOUS USES OF OLD STRUCTURES AND

COMPOSITIONS

MAY

BE PATENTABLE

The discovery of a new use for an old structure based on unknown

properties of the structure might be patentable to the discoverer as a process of

using.

In re Hack,

245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA

1957). However, when the claim recites using an old composition or structure and the

“use” is directed to a result or property of that composition or structure, then the

claim is anticipated.

In re

May,

574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978) (Claims 1

and 6, directed to a method of effecting nonaddictive analgesia (pain reduction) in

animals, were found to be anticipated by the applied prior art which disclosed the

same compounds, as well as a method of using them for effecting analgesia but which

was silent as to addiction. The court upheld the rejection and stated that the

inventors had merely found a new property of the compound and such a discovery did

not constitute a new use. The court went on to reverse the obviousness rejection of

claims 2-5 and 7-10 which recited a process of using a new compound. The court relied

on evidence showing that the nonaddictive property of the new compound was

unexpected.). See also

In re Tomlinson,

363 F.2d 928, 150 USPQ

623 (CCPA 1966) (The claim was directed to a process of inhibiting light degradation

of polypropylene by mixing it with one of a genus of compounds, including nickel

dithiocarbamate. A reference taught mixing polypropylene with nickel dithiocarbamate

to lower heat degradation. The court held that the claims read on the obvious process

of mixing polypropylene with the nickel dithiocarbamate and that the preamble of the

claim was merely directed to the result of mixing the two materials

olypropylene by mixing it with one of a genus of compounds, including nickel

dithiocarbamate. A reference taught mixing polypropylene with nickel dithiocarbamate

to lower heat degradation. The court held that the claims read on the obvious process

of mixing polypropylene with the nickel dithiocarbamate and that the preamble of the

claim was merely directed to the result of mixing the two materials. “While the

references do not show a specific recognition of that result, its discovery by

appellants is tantamount only to finding a property in the

old

composition

.” 363 F.2d at 934, 150 USPQ at 628 (emphasis in

original)).

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