Composition claims that recite a property of the composition are inherently anticipated by the prior art disclosure of that composition; there is no requirement that the prior art appreciate or recognize the later-discovered property. In contrast, claims to new uses of known processes or compositions are not inherently anticipated by prior art disclosure of the composition or process. The distinction is important in certain areas, such as pharmaceuticals, where claims for new uses of existing compositions routinely issue.
In Abbott Labs. et al. v. Baxter Pharm. Prod's. Inc., Nos. 06-1021, -1022, -1034 (Fed. Cir. Nov. 10, 2006), the Federal Circuit reversed a district court judgment that Abbott's '176 patent was valid, finding that the claims were anticipated by appellant Central Glass's '211 patent under §102.
Abbott's '176 patent is directed to a sevoflurane anesthetic composition stabilized against degradation from Lewis acids by the addition of, e.g., water. Baxter argued the '176 patent was anticipated based on the prior art '211 patent which disclosed a composition of water-saturated sevoflurane. The district court rejected the '211 patent as anticipatory under Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) because the '211 patent was directed to an intermediate step in the production of sevoflurane rather than a final step and thus was not directed to the same purpose.
On appeal, the Federal Circuit reversed, stating that newly-discovered properties of a prior art composition are not patentable over that same art where the patentee explicitly claims the new property. Inherent anticipation does not require knowledge or appreciation of the property in the prior art. It was thus irrelevant at the time of the prior art '211 patent that no one knew the water-saturated sevoflurane disclosed therein had the property of resisting Lewis acid degradation. The claimed property of resistance to degradation was inherent in the disclosure of the '211 patent sufficient to anticipate. The reasoning in Bristol-Meyers Squibb that "new uses of known processes may be patentable" was based on the definition of "process" in 35 U.S.C. § 100(b), and thus was not applicable to the composition claims of Abbott's patent. Since both the '211 and '176 patents disclosed methods for producing high purity sevoflurane, both were directed to the same purpose sufficient for a finding of anticipation.
Please visit http://media.aplf.org/resources/alert2006-60/AbottBaxter.pdf for a copy of the case for your reference.
To discuss these topics further, please feel free to contact the author, Michael R. Dzwonczyk (firstname.lastname@example.org), at Sughrue Mion, PLLC in Washington DC, USA.
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