Int’l Flavors & Fragrances Inc. v. The United States of America


Because the proposed claims only added features to the original claims, without removing any feature, they satisfied the requirement that substitute claims not enlarge the scope of the original claims. However, Patent Owner bears the burden of demonstrating, by a preponderance of the evidence, the patentability of the proposed claims. To demonstrate patentability, the patent owner “should discuss, as well as present evidence, if appropriate, as to the level of ordinary skill in the art, and what was known regarding the features being relied upon to demonstrate patentability of the proposed claims.” The Patent Owner did not successfully demonstrate that one proposed independent method claim was patentable because use of an identical prior art compound for the purpose stated in the prior art would inherently have achieved the purpose recited in the proposed claim. (Merely discovering a new benefit of an old process does not render the process again patentable.)

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