Ex parte Bayer Cropscience, LP

Informative decision only: persuasive authority, not binding precedent. When a method claim's body recites the same compound and the same steps as a prior art reference, and the preamble states only a purpose (here, "attracting insects") that does not add a structure or step, the Board may treat the preamble as not distinguishing the claim. The unrecognized result inherent in the prior art method then anticipates under § 102(b), because appreciating a necessary result of a known process does not make the process patentable. No prior precedent directly addressed this issue beyond the informative Ex parte Batteux decision, which the Board followed to explain why Jansen v. Rexall Sundown, Inc. does not require a different result in prosecution. For the examiner or requester, a reference that discloses the same compound and the same method steps can anticipate a purpose-preamble method claim, even if the reference never recognized the claimed purpose. For the patent owner or applicant, discovering a new property of a known compound does not distinguish the claim. The applicant must show that the preamble adds a structure or step, or must produce evidence that the result would not occur or that a narrower reading is warranted. The Board relied on In re Cruciferous Sprout Litig., MEHL/Biophile Int'l Corp. v. Milgraum, Perricone v. Medicis Pharm. Corp., and In re Papesch, among others. LEGAL TEST OR STANDARD: A preamble is a necessary claim limitation when it imparts some structure or other feature to the claimed invention; where the claim body defines a structurally complete invention and the preamble states only a purpose or intended use, it is not a limitation. Claims get the broadest reasonable interpretation in prosecution. A reference anticipates when a limitation not expressly found in it is inherent, and appreciation of the result is not required. The Board also applied the standards that a species named in a longer list can anticipate and that one skilled in the art must be able to at once envisage the claimed subject matter. TRIGGERING FACTS: Claims 1 and 15 recite methods for attracting (and killing) insects by offering fipronil to the insects for ingestion. Hatton and Colliot each disclose fipronil, a known insecticide, applied to soil and plants in conventional forms, but neither says fipronil attracts insects. The Board found attractancy inherent to fipronil. It found the appellant had not shown that the preamble adds a structure or step, had not shown that ingestion would not occur, and had not given sufficient evidence for a narrower reading of offering for ingestion. KEY QUOTE: "Mere appreciation of a necessary result of a known process does not impart patentability to that process." (Paper N/A, p. 11) PRIOR PRECEDENT AFFECTED: Follows and quotes Ex parte Batteux, Appeal No. 2007-0622, 2007 WL 5211675 (BPAI, Mar. 27, 2007, Informative Opinion), which distinguished Jansen v. Rexall Sundown, Inc., 342 F.3d 1329 (Fed. Cir. 2003), as an infringement case construing the claim to sustain validity rather than giving the broadest reasonable interpretation. The Board also followed MEHL/Biophile and Perricone, and distinguished Rowe v. Dror and In re Paulsen on the ground that the attracting feature adds no structure or step. PRACTICE TIP: When a reference discloses the same compound and the same steps, do not rely on a purpose preamble or on the discovery of a new property to avoid anticipation. Show that the preamble adds a structure or step, or submit evidence that the claimed result would not necessarily occur or that the claim should be read more narrowly. Attorney argument and Jansen alone will not suffice in prosecution or reexamination.