*1 сomplexity claimed, making compound is not determined for his although making them, patentable. for method be unobvious and complexity may in determin- be a factor more than is A chemical formula ing the obviousness of the method. Sec- conveys just picture. the skilled It ondly, whether other methods for mak- great the nature chemist a deal about compounds are or are claimed compound it and how will react. by evidence, not obvious should be shown picture (formula) for com Given statements counsel the brief pound, looking formula at the chemist given relatively as to unobviousness are compound for another which differs weight. See, Cole, little In re 326 F.2d homolog gen slightly that it is called a 769, 51 CCPA 919. erally expects compound the second properties to the first similar one. Finаlly, appellant’s contention closely if the is settled that second appropriate that it would be more compound possesses unexpected related charge the Patent Office with the bur advantageous properties, well be providing relating den of evidence regarded patentable. as unobvious and processes making obviousness of for Papesch, In re 315 F.2d 50 CCPA compounds claimed is without basis. In present ease, the examiner cited showing compound a reference ease, Office present Patent admittedly given compounds that, makes the claimed proposition proceeds upon the prima up facie obvious it is producing one now a formula and method appellant prima to rebut facie compound, knоw chemist skilled by showing case homolog unless there the unobviousness produce how compounds. his This he something has failed do. to demonstrate in the record is difficulty expect he some The decision is affirmed. say doing that this assess- cannot so. We Affirmed. capability ment erroneous. in the art J., SMITH, J., WORLEY C. con- cur in the result. nothing, than the other There affidavit, to indicate in the record difficulty experience a chemist would regard. effect, se affidavit making modi lects two methods they work, fication, denies that any that will work method
avers complex. The affiant does
will be say of no method that he knows other 54 CCPA ordinary man nor that he believes the Application of Richard E. WARNER any not know of skilled in the art would Virginia Ann Warner. pregnant in denial method. Such Appeal Patent No. 7822. place in sufficient on the record United States Court of Customs modification of dication that Appeals. and Patent compound be, would not June to one skilled as obvious compound. allegation “any
Appellant’s compounds useful
method to make his likely equal complexity, un to be of
obvious, and not within the unpersuasive
of a chemist” is of error place, decision below. the first
patentability compounds of the claimed *2 Warner, appellants. E.
Richard Washington, Schimmel, Joseph D. C. C., Sears, Washington, (Jere D. W. counsel), of Pat- for the Commissioner ents. RICH, Judge, WORLEY, Before Chief ALMOND, Judges,
SMITH, H. KIRKPATRICK.* WILLIAM Judge. SMITH, appeal decision This is affirming Appeals the Board appealed rejection examiner’s 103. Since U.S.C. § claims1 factual basis find a substantial obvious- ness, is affirmed. its decision [*] Senior Pennsylvania, sitting District Judge, Eastern designation. District of 1. In July 12, ty Cosmetic Sticks.” entitled “Graduated Serial No. 123,537, Densi filed aspect, appellants’ pencil.” Zetti, According in- In its broadest his inven- applicator necessity lady stick vention is a cosmetic obviates the of a consisting multiple carrying lipsticks refinement colored materials numerous density having and, further, increase in her to “use allows two or lipsticks superposing is more toward the center.2 effect” *3 “Lipliner-Lipstick,” “complex manipulations claimed as a “stick absent that are on: type eye type lipstick,” lows: chapped lips,” “stick unit cоlors readily ble scribed invention are stressed: “Eye of the second, Zetti Rubenstein Knight The cosmetic stick. to maintain which lipliner lipstick lipstick lipliner line described different molded One embodiment of outline the addition to termed a the area defined Shadow-Eye lipstick can be following embodiment of the always understood (Italian) usable conventional shadow.” material material which or core is or material. graduated density the permits or as a combined material formed “stick examiner’s answer as lips point. Both remain darker lips, “Lipliner-Lipstick,” functioning references were relied 2,409,000 588,867 Aug. 24, 521,507 “Lipliner-Lipstick” Liner,” from a consideration of Two pointed tip type application for the core applied applied to the out- lipstick about type in one first, shade than then the the invention features of a more use, is harder Mar. and a “stick Oct. may features deodorant,” as a means contrasting material also serves a core of unit; lips the hard lipliner. be of 8, 1946 of desira- inven- softer with- than and fol- the are de- in maintained.” consisting lar “point-maintaining graphite. type non-aesthetic wearing thereof, sists of two centric core “distortion Thе core ages ing mation carry opinion with rejected being unpatentable Zetti As stated al cosmetic Claims Knight Rubenstein [as] preparation The ****** Claims end Knight commonly used for surrounded surrounding layer device such as a in forward layers so that of the advantages lipstick of 2, 4, of other shipment.” view serves core The of a core of discloses a marking in sticks and cumbersome.” discloses a crayon being unpatentable 5 and 7 were 3 and crayon will of of this crayon or Rubenstein. Knight marking greater progressively tapering or in the formation of of prevent concept in the for- two a materials, or view at the 6 were crayon over convention- The graphite or simi- forming self-sharpening.” pencil or result softer pencil or marking pack- be or Rubenstein. or more сon- crayon density of devices such layers crayon opinion: pointed bending rejected always in an Knight. or is termed material. a mark- a dense crayon is our softer pencil “of a writ- [*] than even over con- end old be or * other cosmetic sticks. conventional consisting lipstick Zetti “of discloses a plural segments advantage parts or different Whatever be qualities plural- type providing lipstick color.” The with and/or lipstick ity extending axially portions “is characterized arranged plural lengthwise color, advantages parts are different lipstick beside the other in such inherent disclosed single arrangement patent. a manner as or Zetti The to form stick rejected Appellants’ specification 6, having states claims 3 and deposited “laminated,” We sоfter material in such term as “indefinite.” presented under a manner denser material find that sec- relative to the issue dispositive claims. as to a concentric tion 103 is of all “establish center or center unit.” examiner laminated record, appellants appear in concentric form as On
such colors favor. nonanalogous art; and the feature of to the consideration plication. writing instrument to maintain the writ- the references relied on are drawn from the absence of attorney that both Office relied on icated and we appellants’ ing point. Appellants appear As to the first tween was made to a been obvious at ferences are subject matter as a whole would have patented whatever differences are skill view оf nothing patentably obvious variation Rubenstein reasoning, [******] should essentially end have considered them Knight at of record We arguments law. and the But it is the be resolved in an inventor’s any to which new according appellants art. mention this fact because appellants’ appeal of such precise prosecution state graduated density “hindsight”; reason, appellants Knight on threе reasons: person and Rubenstein time Discounting the time the invention results. the Examiner that * to indicate unproductive matter here second, the Patent are argued, they represented ** legal terminology a nature that the they having ordinary would be but quite extensive pro art such dif- sought to be are entitled claimed se. and form and carefully disclose There third, agree every pred- first, were in а they ap- be- Knight from consideration under section rejecting their claims and that such rea- soning is forbidden as a test of obvious- excludes the sight reasoning turn We think those of cosmetic lem of pencil, find that the problem taining to failed in the search for such a device Appellants’ problem and ventors, solicitor’s conclusion that This is not a ease where others claimed reasоn would be aware nary obvious at the time it was made to one such combination lar combination. prohibits skills, Second, appellants argue that hind- Conover, the this appellants to skill of the writing would be *4 depends Resolution of maintaining problem. subject and pencil regardless point first to have held to in the cosmetic skill in the art to teachings crayon nonanalogous grant art. We on whеther had discovered on cosmetic matter solution. aware has been of However, ordinary faced with art for or was aof statutory of Rubenstein short, combined pertains. point of or appellants’ first reasonably turn agree those of their See, they employed art doctrine skill section 103 we do not on such a reasonably pencil art applicator. have beеn standard. of main both e. personal solution particu would.3 All in unless g., prob ordi and had ele the efficient discover “an method first ness under section 103. do not We designing combining Lipstick hindsight prior evaluation of the Lipliner configura- basic art is sustain conclusion tion” and before their invention such a invention is with- configuration conceived, “had not been in the stated conditions of section 103. contrived or discovered.” This conclusion from follows argues crayons writing 3. The solicitor in his brief fol- intended for or drawing : lows use. Parents of small children Knight’s occasionally is evident disclosure are confronted stark density concept Also, desperate that his evidence of that fact. writing writing applicators, limited to sometimes heroines lipstick messages resort being applicable “any dry mirrors, sоlid used on marking purposes which is obtain- dramatists could us Ob- believe. grades use, table of several of hardness.” viousness transcends conventional too, analogy any Then rate. definite exists be- here type applicators tween stick cosmetic conclude that John Thus before we can in Graham enunciated of the test 17-18, disclosed invention is ‘obvious’ Co., 383 U.S. at specified under the in 35 сonditions at 694: * * * facts we must evaluate U.S.C. scope Under § (1) from which to determine what de- prior to be art are content of shown in the art at ; between termined differences made, time invention was claims at issue art and knowledge which a ascertained; level to be ordinary pos- skill in the art pertinent ordinary skill sessed the time the invention background, Against resolved. was made. nonobviousness the obviousness or is determined. matter “Here, neither the record nor cording ondary consideration” which should be section leged color ness. record4 should be the art. The well as the feature of lants’ on the liner And considered in characterized sticks, sity patentable invention, section 103. While Finally, is obvious and the claimed combination of a [*] lipliners for the and a lipsticks commerсial with 103. lips [*] appellants a factual resolved appellants: appellants think the Patent Office Supreme lipstick was also shown to be board’s decision find a substantial Considering such evidence as a “sec- resolving *5 efficiency were Patent Office success admittedly hence that shown Court argue their be obvious the issue under blending colors of their use all urged favor. the facts in Graham on that doubt lipliner-lip- old. it is not supports Multiple obvious- position the al- to one old in appel den Ac- old. lip- as The Appellants also cite: In re In re 421]. peals that 262.” judicial data as this reason Under facts of which we are 84; vention been obvious CCPA 801; doubt should CCPA [848], [317 solicitor to the factual Nurkiewicz unwilling conclusion of the board Soli applicant. In F.2d art for such factual data. 818, 725, 338 F.2d at the time it re Altmann and the art of metal these notice hindsight appraisal (1963), the invention argues: we 941], 137 264 F.2d 261 F.2d be think there is a doubt to one of supplies the circumstances, resolved in favor of (1964), 1020, In re substitute 50 C.C.P.A. support basis 894, 241, U.S.P.Q. [143 able to take 52 Devine, Bureau, made. We supporting 120 121 spinning. ordinary U.S.P.Q. C.C.P.A. specula- the in- USPQ USPQ have 1288 797, For ap- 46 46 * * * The in In Court’s decision re- Appellants that doubt be ask ** 1039, Sporck (1962), re 49 C.C.P.A. *. in their favor sоlved 686, U.S.P.Q. 360, 301 F.2d 133 no reasonable there is submitted particularly point: mat- doubt basis for appealed ter claims would “Obviousness is a ordinarily to one obvious from which we are to draw More- appearing view facts in the record longer over, war- no judicial notice be taken. inven- appellants from mercial success stems 4. whether We need not consider alleged other causes. tion and not from com- have demonstrated 1016 resolving appli- rant for case nor are the other cited authorities by appellants. Nurkiewicz, cant’s re favor. See Graham v. John su See Co., 1, 684, pra (the 18 Patent cited [86 383 U.S. S.Ct. Office “has not * * * USPQ 545,] 459, anything dispute [applicant’s] 15 L.Ed.2d 148 * * theory” and “no dis inven patentability an hindsight applicant’s closes” the features of in tion is to be viewed vention) Soli, supra (“This In rе Goodyear event,” or “viewed after allega not a case examiner’s where 279, 275, Co., Ray-O-Vac 321 U.S. Co. v. appears conjec based mere on 593, L.Ed. 721 88 64 S.Ct. position ture” “the office therein, also fn. cited See authorities logic seems to us to be founded on both relying citing Sporck, supra, re principle”). and sound scientific Goodyear. Mr. Jus as stated on Or Dinwiddie, 1016, In re 347 52 Adams, 383 tice United Statеs Clark (the appel CCPA 1693 evidence included 39, 50, 15 L.Ed.2d U.S. explanation” lant’s “concrete versus (1966), ele the individual 572 whether speculation”); “unsupported “begs the old of combination are Sheppard, 339 F.2d 859 question,” “If such combination (the evidence included factual asser bringing novel, the whether issue is tion in “specu reference versus board’s together taught Adams them lation”).5 light art.” obvious sought Thus, to be wherе the invention cases above The “doubt” patented combination of resides in a the absence related to arose elements, proper inquiry is old wheth support the Patent of facts bringing together was er them obvious Office’s skill, not, and having one of whether pre We think section 103. him, invention before language cise of 35 U.S.C. § through hindsight con find shall be entitled to “[a] *6 struct invention from elements of unlеss,” concerning novelty unob prior art. viousness, clearly places a burden forbidding proof re considered the doctrine Patent Office which on the hindsight Van quires in re produce reconstruction it to factual 981, Wanderham, rejection 54 CCPA F.2d under 378 for its of an Supreme 103, that the Therein noted -. we 102 and see Graham sections against “slip lacking recently proof cautioned we Court Adams. is Where hindsight,” ping resolving necessity John Graham v. no for doubt see 684,15 1, Co., 36, position, 86 S.Ct. for 383 U.S. favor of the Patent Office’s citing Equip cases, 545, where, example, Auto Monroe as in the
L.Ed.2d
above
Mfg.
Supply
legal
support
ment
v. Heckethorn
&
to
Co.
factual basis
406,
(1964),
Co., Cir.,
412
6
F.2d
under section
332
conclusion
obviousness
888,
160,
missing,
sup
85 S.Ct.
is
cert. denied 379 U.S.
103
record
93,
ported
position
applicant’s
in turn cites
13 L.Ed.2d
Sporck, supra. Contrary
аppellants’
through
invention
reconstructed
was
hindsight.
urgings, Sporck
“rule
not a
doubt”
Nowhere
these eases
1545,
Accord,
Hofstetter,
findings
law.
5.
of fact
conclusions of
53
Moreover,
believe obviousness is a
le
While this
latter
deci-
362
293.
we
“hindsight
gal
evidence,
is a
reconstruction”
on factual
sion
conclusion based
“solely”
case,
Co., supra,
and not
not
of doubt”
Graham v. John Deere
“rule
and,
opinion
Bae
“rule of doubt”
determination
as
discusses the
factual
held
granted
Ladd,
(D.C.Cir.1966).
as certiorari
has been
nitz v.
Compare
1017 sup- patentable, necessary there the factual basis the invention is assump- speculation, port the conclusion that it would have resort unfounded sup- hindsight reconstruction been obvious to one tions together. ply bring To United basis. the elements deficiencies its factual rulings Adams, supra. the extent the Patent Office States v. supported, re- there is no basis Supreme Graham Court against solving correctness. doubts Adams, supra, the use of foreclosed Likewise, not resolve doubts detеrmining ob substitutes for facts in favor of Patent Office determination legal 103. The viousness section the record when there are deficiencies sup must be support- to the bases legal ported by con Where facts.7 its conclusion of obviousness. supported clusion is not facts it can supplied Here, the Patent Office And, stand. admonished support proper factual basis Graham, at 383 U.S. dоWe obviousness.8 conclusion of sifting primary responsibility “the posi- any support for not find unpatentable out material lies in the hindsight reconstruction tion that Patent Office.” provide that fac- rejection A based on section the “rule of doubt” Nor is tual basis. basis, clearly must rest on a factual applicable. interpreted and these facts must with therefore The decision of board hindsight out reconstruction of the in affirmed. making vention from the evaluation, Affirmed. all facts must be consid ered. The Patent Office has the initial
duty supplying KIRKPATRICK, factual basis for J., WORLEY, C. rejection. may not, because it J., the result. concur in Additionally, Graham and “secondary Adams clear- including facts, consid- ly just out as certain facts State- i>oint to in Graham. referred erations” support obviousness, appear of thе Commissioner may support other facts nonobviousness. contrary. ’....... Thus Adams factual data and satisfied if examiner is Supreme commented, clearly Court U.S. the claimed 51-52, teachings at 714: S.Ct. in view of the battery having We conclude the Adams ordi to a *7 seen, also nonobvious. As pertinent we have nary then operating granted characteristics patent if even not bo a affidavits, should battery Adams disclaimers, shown to have terminal unexpected, been passed and to apulicant, sur- far like then-existing change wet batteries. papers cannot since Despite the that each of the ele- un fact become what is obvious so battery patentable Adams was well therefore prior art, known them combine [Emphasis added.] invention. as did Adams O.G. reasonably art must Manifestly havе the at least both sides ignore (1) batteries which con- right ob- issue of be heard on the operate open tinued to Also, on an supra. circuit Adams, viousness. and which explain heated in normal use were not does Patent Office practical; considerations,” “secondary water-activated theory what only batteries were successful when after often arise facts which electrolytes combined with “contrary detrimental issued, 103.” to section magnesium. long- use These Procedure, Law and Administrative See accepted factors, togeth- when taken Review, 54 Geo.L.J. Judicial 326-41; er, would, believe, deter investi- Pro Law and Administrative gation into such a combination as is Pact, cedure, Questions Review of [Emphasis used Adams. Railex 103-07. Geo.L.J. added.] supra Corp., fn. 6. Thus the conclusion of obviousness must rest on a consideration all the