*2 ARCHER, Before NEWMAN and Judges, COWEN, Circuit Senior Judge. Circuit NEWMAN, PAULINE Judge. Circuit Dillon, M. assignor Diane to Union Oil California, Company of appeals the decision of the Board of Patent Appeals and Inter- (“Board”) ferences of the United States Patent and Trademark (“PTO"), Office No- 25,1987, vember rejecting 2 through claims through 22, through 37, all Rg same are the R5, R6, wherein application patent R7 remaining claims organic radical mono-valent “Hydrocar- different 06/671,570 entitled No. Serial atoms. 20 carbon reverse. 1 to about comprising We Composition”. bon Fuel *3 scope are claims narrower The other limitations. additional contain and/or The Invention need decision, claims the other our of view and describes application patent considered. separately not be inclusion of discovery that the her claims known class are tetra-orthoesters The hy- compounds tetra-orthoester certain undisputed It is compounds. chemical of reduce will compositions fuel drocarbon hydrocarbon their combination soot) (i.e., particulates of solid emission not shown fuel, is any purpose, the fuel. during combustion par- to reduce their use hydrocar- and that to claims presents Dillon appeal hy- containing these te- combustion from emissions compositions ticulate fuel bon suggested of use method or tra-orthoesters, shown and fuel is not drocarbon particulate reduce to compositions these prior art. 2 is Claim during combustion. emissions composition claim: the broadest Rejection hydro- comprising: 2. A to be the claims all of Board held amount of fuel; a sufficient and carbon obviousness, ground of unpatentable toas reduce so one orthoester at least primary of certain in view 35 U.S.C. § the com- from emissions particulate primary ref As secondary references. and fuel, wherein hydrocarbon bustion Sweeney on two relied the Board erences of the formula: the orthoester 4,390,417 Patents, Nos. States United hydro ’417 describes Sweeney 4,395,267. containing speci compositions fuel carbon ketals, i.e., ace- compounds, fied chemical tri-orthoesters,1 for “dewa- used tals, and Sweeney ’267 describes tering” the fuels. hydrocar compositions three-component are the same R5, R6, wherein Rv R8 gasoline, immiscible than fuels heavier bon organic radical mono-valent or different tri-orthoesters, wherein alcohols, and carbon atoms. about to comprising pre as to serve co-solvents tri-orthoesters 24: is claim claim method The broadest fuel separation between phase vent particu- reducing the “The explicitly found: 24. A method The Board alcohol. a the combustion from the use of emissions teach late do not Sweeney patents combusting comprising fuel hydrocarbon appellant’s recited the orthoesters fuel and hydrocarbon a mixture claims.” one orthoes- of at least amount sufficient al. et United Elliott Board cited particulate emis- toas reduce ter so 3,903,006 (and certain Patent No. States is of the sions, the orthoester wherein significant) sec- as not here patents, other formula: tri-or- describes Elliott ondary references. as for use and tetra-orthesters thoesters (non-hydro- hydraulic scavengers water stated that carbon) The Board fluids. equivalence be- shows reference Elliott tri-orthoesters, tween tetra-orthoesters combined “it clear from and that teachings references of these [Dillon’s -OR C(R)(OR)3- have four (-OR) Tetra-orthoesters as three orthoester have 1. Tri-orthoesters atom, and atom, groups carbon bonded to central a central carbon groups bonded claims, C(OR)<i; Dillon’s represented see as hydrogen bond carbon the fourth supra. (-R); represented they are hydrocarbon radical operate compositions, remove tetra-orthoesters] Dillon had not overcome the non-aqueous water liquids by the case of obviousness. same mechanism as the orthoesters of The Solicitor maintains that it is not of Sweeney”. controlling weight, pertinent, even The Board stated that there was a “rea there nois art suggesting Dillon’s use expectation” sonable that the tri- and tetra of reducing particulate emissions, any orthoesters would have properties, compositions similar to those based on “close structural and chemical Dillon. The Solicitor maintains that similarity” and the fact that both the prior existence of the tri-orthoester art and Dillon use these *4 of Sweeney, which taught are to have an “fuel additives”. The Board stated that entirely use, unrelated property and suffice since the tetra-orthoesters were known to prima to make a case of obviousness facie serve as scavengers hydraulic water in as to Dillon’s method as well as compo- her fluids, is a “there expectation reasonable sition claims. that compositions will have similar to the claim composi The Issue tions”; is, the tri-orthoesters The issue is the patentability in terms of would expected be particulate to reduce 35 U.S.C. 103 of claims to Dillon’s new Although emissions. no reference was cit composition and claims to its new method ed as suggesting any the use of orthoester use, of when components of the new particulate emissions,2 to reduce or to show composition are deemed to structurally relationship between property of wa components of known composi ter scavenging and the property of reduc tions, the new but by use discovered Dillon ing particulate combustion, emissions from composition her new taught neither concluded, the Board and the Solicitor ar nor suggested in art. The thresh gues on appeal, that the claimed composi old whether, under such circum tion and method “would prima have been stances, unpatenta- of obvious from the teachings combined bility for obviousness is deemed made.3 of the references.” reasoning, On this Board held that unless Dillon showed some I unexpected advantage superiority of her Composition The Claims compositions tetra-orthoester fuel compared as compo tri-orthoester fuel The facts as to the art are not in sitions, Dillon’s new compositions as well dispute; only the conclusions drawn there- as their use to particulate reduce emis Sweeney issue. compo- shows unpatentable sions were for obviousness. sitions hydrocarbon of tri-orthoesters fu- The els analyzed purpose then for the specifi- scavenging Board of water in cation, fuels; wherein Dillon Elliott had shows that disclosed that both tri- and both tri- and tetra-orthoesters are tetra-orthoesters the property effective have of sca- in reducing particulate venging hydraulic emissions water liquids. from com- No bustion hydrocarbon fuels, of present- compositions reference shows of tetra-or- ed data to illustrate property. hydrocarbon this thoesters any pur- fuels for Board held that pose, because these data do not any reference shows orthoes- show the unexpected particulate-reduction ter having fuel the property superiority of the tetra-orthoester composi- reducing particulate emis- compared tions as with the tri-orthoester sions from combustion of fuels. Although art, was it not cited or relied as specifica- Dillon stated had in her Board, Moy the Solicitor cites et al. U.S. tion. Patent 3,817,720, showing No. "smoke-sup- for its fuels, pressant” in hydro- combination of a position 3. Dillon’s that evidence of unex- ether, quinone alcohol, isopropyl pected and diacetone required results was not in this case. alcohol. Moy only The Solicitor cites to show Thus the Board’s was based decision on Dillon’s particulate emission specification awas known and the facie.
8 early explained was status case made. The Board held that Lunsford, In 382 n. re despite the fact was made new, (CCPA 1966): n. compositions were that Dillon’s any suggestion in despite absence how one finds the “obvi- Just these art that instance, first examiner ous” and use discovered property have say, apparently he envisions does not but In this retrenchment Dillon. view only. That comparison of structures weight precedent, the Board from approach an is not sanctioned such history to review the we have undertaken court, concededly the although law jurisprudence. of this less well-defined June Answer, of the Examiner’s can be date A Krazinski, in In seen, e.g,, re USPQ [(CCPA 1965)]; situations variety of factual Ruschig, arisen, Customs and have Court Ward, Claims, 1965)]; [(CCPA Appeals, the Court Patent Circuit, 1964)]; produced [(CCPA has rich the Federal *5 Lunsford, USPQ re sought 526, 327 140 precedent, the courts F.2d body of as Riden, Jr., [(CCPA 1964)]; In re identify unifying apply criteria and consist- 425 761, USPQ [(CCPA F.2d 112 reasoning to determinations 318 138 ent Papesch, 1963) ]; composition and 137 of obviousness 1963) re USPQ (CCPA ]; In Peter- well 43 compound claims. Procedural as as [ established, (CCPA ing, USPQ 301 were facil- rules substantive [ Lambooy, 1962)]; application of 35 itate the uniform U.S.C. (CCPA diversity 1962) despite great technologi- [Empha- in [ ]. prior relationship original] in
cal and in the sis facts the at issue. art to inventions PTO, in step It behooves the the first examination, patent to ascertain the sim step
Thus, in the as the first exami ilarities differences in structure and and process, the PTO determines wheth nation utility, any perti properties or and other prima er case of obviousness is facie examiner,' the to de nent evidence before made, specification, based on deemed particular in any termine whether case a art, any evidence before other prima ease of is made. obviousness If a prima case is the examiner. facie facie Piasecki, See 745 F.2d at made, may adduce evidence applicant (prima is but a obviousness rebuttal, in present argument follow facie legal inference drawn from uncontradicted the determination obviousness evidence). prima If a is on the evidence. made all made, is no rebuttal is neces case not facie Piasecki, B re In sary. See the discussion (Fed.Cir. 1468, 223 determining whether an invention Rinehart, 1984); under would have been obvious section (CCPA 1976); USPQ 143 and cases cited (i.e., application either on the as filed based therein. prima facie) or with additional evidence if adduced, discuss, early applied in will some such is the statute is As we CCPA of the record and the art. As held that a case obvi- view cases solely precedent, appropriate weight made based on illustrated in could be ousness structure, similarity independent given is considerations such as close- use; 1960’s, to the field of the but ness invention arts thereafter, drawn, weight which the cited references are of CCPA and Feder- authority suggestion chemical the motivation or al is Circuit references, utility properties or must to combine cited structure and the inventor, confronting na- determining all whether be considered improvement compared as has been ture of case variety criteria, and a of other and its is considered any particular may all as arise case. No to be without merit. issues, single all these involve 357 F.2d at ignored. can present, they
but when not be responded: CCPA position in this The Commissioner’s ease reasonably is clear that the examiner [I]t immaterial, determining it only the difference in struc- considered whether a case of obviousness tures between has as been made to Dillon’s compounds. and the claims, any no reference rela- shows Appellant was entitled to have differ- tionship dewatering between use invention, ences between the claimed agent use to soot formation reduce subject whole, matter as a and the during combustion. Thus the Commission- art references of record evaluated. [Em- unpatent- er hold Dillon’s invention phases original.] prove able because Dillon did her Id. (citing Papesch, fuel were su- tetra-orthoester perior 1963)). also Linde to the tri-orthoes- soot-reduction ters, although the mann GmbH v. Ameri there is Maschinenfabrik Co., Hoist art that either would have can and Derrick any soot-reducing properties at all. That (Fed.Cir.1984) (it “ solely specifica- idea comes from Dillon’s error inquiry to focus ‘solely tion, she tri- wherein disclosed that both created, product rather than on the obvi and tetra-orthoesters are useful to reduce ousness or nonobviousness of its cre *6 hydro- soot-formation from combustion of ”) (quoting Corp. General Motors v. ation’ carbon fuels. Comm’n, States Int’l United Trade precedent
There is extensive
on these
denied,
cert.
(CCPA 1982),
points.
precedent
light
in
We review this
459 U.S.
(1983)).
of the
Board’s decision
the Commis- 103 S.Ct.
This has been fuel not ter did have the upheld precedent erty this court. For reducing particulates in combus- example, the examiner had tion—although art itself silent Lunsford taken position that: property any suggestion as to this or there- of, tri- argument ‘subject compo- that the matter for either or tetra-orthoester as
a under whole’ 35 U.S.C. 103 includes sitions. Although composi- entirely interchangeable: a example, invention is new few tion, the Board as well as the Solicitor have statutory utility machines have no or direct- dealing compounds cited new cases problem, ed to the solution of no in contrast to compositions, new and also new mechanical compounds may solely chemical which be of completeness devices. For we will discuss these scientific interest. matter, subject although classes of the cases are (CCPA 1979) compounds (new useful as precedent shows that
Review of prima have obvious from pesticides situations were specific while factual facie type showing, compounds as justified requiring structurally infra, general the CCPA pesticides). discussed as known have declined estab the Federal Circuit analysis precedent This has evolved general as a basis requirement lish such way diversity One of factual situations. compounds and of new patentability explained their reason that the courts have weight precedent compositions. by pointing there must be a out that subject that when the effect art that would have compound or com chemical matter is a new ordinary to the same person led a skill case of obviousness position, facing appli solution (1) unless the new made both is not deemed provide art must motiva cant: structurally composition is compound or whereby ordinary skill would be one of com the reference similar to has applicant led do that done. which (2) suggestion or is some position and there Corp., Stratoflex, Aeroquip Inc. v. expectation 1530, 1535, (Fed. have the will Cir.1983): that discovered or a similar as same scope art has been de- Grabiak, applicant. “reasonably pertinent fined as (Fed.Cir.1985): particular problem with inven- compounds “very have chemical When tor was involved.” and similar similarities close” structural Wood, (quoting utilities, more without (CCPA 1979)). Payne, may be made. F.2d at at 255: Rosselet, compounds essentially 1965): prior art When “bracketing" the claimed appellants have failed to think [W]e similarity are all structural known present evidence to overcome a adequate pesticides, one of skill the art showing *7 to make clearly be motivated those would “gross structural reason of the admitted compounds searching in for new same compounds, the art cou- similarities" of compounds pesticides. pled fact that those with the same utility shown to have are Wood, 638, 641, In re Swan 199 activity. pharmacological area [Em- (CCPA 1978): USPQ 137, 139 phasis in original.] similarity In of the close structural view prima question of whether facie activity, antimicrobial we disclosed] [and has been made case of obviousness art that one skilled in the would believe specific technological prior turns art facie, been, prima to have motivated differences, as to similarities and both compounds the claimed the ex- make utility, or between structure too, they, possess pectation compounds or the claimed activity. antimicrobial See, In e.g., taught prior in the those simply ways explain- other These 643, 646, USPQ2d Chupp, 2 re F.2d 816 must ing that decision-maker consider Cir.1987) (Fed. (new 1437, 1439 confronting applicant as herbicide was obvi useful person to ascertain how order structurally art com ous from skill would view its solu- herbicides); Grabiak, pounds 769 useful as 1012, 1018, In re Gyurik, tion. (al USPQ 226 at 871-72 F.2d USPQ (CCPA 1979): 552, 201 557 pri- though similar was disclosed determining An element compounds, and claimed compound is moti- of a new chemical similarity was insufficient to structural having ordinary skill in the Payne, 606 case); of one In re vation make 303, it. That motivation is not 314, art to make F.2d 203
1561
1596,
1075-76, USPQ2d
1071,
1600
5
always re- F.2d
and is
abstract,
practical,
but
applicant’s
(Fed.Cir.1988)
(although the
uses one skilled
properties or
lated to the
range
overlaps
range
to
temperature
expect
in the art would
reference,
pur-
applicant’s
have,
in a
if made.
shown
temperature
using the claimed
pose
872, 874,
USPQ
Cable,
146
F.2d
In re
347
appreciated in the
taught
range was
1965):
175,
(CCPA
177
688,
686,
Geiger,
art);
F.2d
un-
invention
Patentability
appellant’s
(al-
1276,
(Fed.Cir.1987)
USPQ2d
evaluated
103 must be
der 35 U.S.C. §
compo-
prior art disclosed the
though the
highly de-
background of the
against the
for differ-
nents
it re-
art to which
veloped
specific
uses,
not established
ent
an
background includes
this
lates and
in-
teaching, suggestion or
some
“absent
prob-
unsolved
understanding of those
combination”);
supporting centive
appellant
art which
persisting
lems
Donovan,
554, 562,
re
by his inven-
solved
asserts have been
1975):
v. Minneso-
Eibel
Co.
tion. Process
incorporate
Co.,
might
That
Paper
261 U.S.
ta & Ontario
[the
art]
in appel-
be used
(1923).
elements
could
322,
skill. It is Co., 1567, 1572, 220 724 determinations. ness (Fed.Cir.1984): 588 facing problem the inventor is a basis Appellant dispute does not directly of the inven related to determining analogous whether art is Particularly in the struc tion. cases where under the standards of the Court of Cus- related, closely the obviousness tures Appeals at toms and Patent is to look by consideration of the analysis is aided whether it deals with a im problem facing the inventor and the being by to that addressed the inventor. See, seeking. provement he is for exam Orthopedic Equipment v. Co. United Benno, 1340, 1346, ple, In re 768 F.2d 226 States, 702 F.2d (Fed.Cir. 1985), USPQ 683, wherein (five (Fed.Cir.1983) judge panel): sug court reason is observed “[n]o determining the relevant art of the gested why anyone would be led to ‘modi claims suit one looks to the nature of ” way fy’ done problem confronting the inventor. problem. his The court inventor to solve Engineering Corp. Weather America v. stated: States, 281, 287, United 614 F.2d 222 Ct.Cl. say has a word to Neither reference 322, 334, USPQ 41, (1980): instability about the ... under ... ten- approach by The near unanimous faced sion ... the inven- [the courts is that “[t]he calling This is not a situation tor]. in evaluating relevant a claim of obvious- tests, showing comparative or a of “un- prob- ness is defined the nature of the results,” expected to which the Solicitor confronting lem the would-be-inventor.” has referred. There is no Grant, A. Louis Inc. v. Keibler (quoting and hence no be overcome Indus., Inc., type need for that of evidence. Rinehart, (7th Cir.1976)); also, Id. 688. 1054, 189 USPQ (the problem F.2d at at 149 e.g., Ryco, Ag-Bag Corp., Inc. v. facing the inventor was not to in alluded (Fed.Cir. 1418, 1424, USPQ2d references, any sugges nor was there 1988): reference); tion to combine features of each certainly Beater Bars as such were old in Sponnoble, agricultural having been used on USPQ 237, (CCPA 1969) (“discovery agricultural machines such manure problem” part the source of a spreaders Ryco and balers.... has “subject matter as a whole” to con art, however, nothing shown determining obviousness); sidered suggest the use of the beat- Pye, bagging er bar as feeder machine 1966): as in claim 15. prob- Neither reference is directed to the Inc., Corp. Century Steps, Diversitech v. invention, appellant’s lem solved 675, 679, USPQ2d 1315, namely, developing cleaning composi- (Fed.Cir.1988): having improved the skin tion for lubrici- *9 problem confronted the inventor view, ty only ap- characteristics. In our determining considered must be specification pellant’s suggests any rea- whether it would have been obvious to combining teachings son for in order to solve that combine references is, art but suggestion use of such problem. course, improper under the mandate of 35 U.S.C. 103. GmbH, 730 Lindemann Maschinenfabrik 1462, USPQ 221 Cable, F.2d at 488: In re 872, 879, USPQ 347 F.2d 146 (CCPA 175, 1965): 181 Nothing in the references alone or to- gether suggests any the claimed invention as have We been unable find refer- problem crushing recognition a solution to the ence of record a of the frac- rigidly scrap. cracking problem by ap- massive ture and solved
1563 ap- therefor, dyeing, process may sug- formity of or a a solution plicant, or non-obvious, such a view does pear to be many new re- additional gestion of to all the facts. Obvi- weight not accord appellant’s inven- flowing from the sults is not to determined on the ousness be tion. [Emphasis in purpose basis of alone. 476, 480, USPQ Shaffer, 229 F.2d 108 In re original] 1956) (references 326, (CCPA which 329 Rothermel, 393, 397, In re 276 F.2d 125 problem recognized applicant’s would never 328, (CCPA 1960): solution). USPQ 332 suggested its have Shaffer Martin, In re 372 F.2d patent was discussed the invention for which a Where (CCPA 1967), 556, USPQ decided 152 610 sought problem persisted solves a Gershon, day as In re the same we must look to the (CCPA 1967), 535, USPQ on which to its solution if we are to as well as In Martin the court relies. the dissent properly appraise done and to what was stated: against would evaluate it what be obvi- having ordinary ous to one skills of here the statement apposite think
We the art. Shaffer, in In re this court 762: 43 CCPA exceeding precedent, The vast well our * * * having the references be- person posi- sampling, contradicts the Solicitor’s cognizant appel- him who was not fore must be tion that obviousness informed would not be lant’s disclosure “regardless properties determined by appellant solved problems In- application.” in the inventor’s disclosed Therefore, can it be said existed. ever deed, relied on the Solicitor the cases recog- which never that these references hereto), (and we by the dissent shall problem would have appellant’s nized discuss, position; they this do not not, We think suggested its solution? do, however, illustrate the evolution the references feel that and therefore law, fact-dependency of de- since there is improperly combined were terminations, judg- and the need to exercise in either of the references no ment. produce they can be combined Stemniski, In appellant’s result. 1971), (CCPA USPQ
Martin, at 615. F.2d at focused on example, the court in quoted was also and followed Shaffer closely structure to compounds of related Skoll, re signifi compounds, where no the claimed Gershon, (CCPA 1975), as was disclosed for properties or were cant no inconsisten- showing that the CCPA saw compounds, other than as prior art and Gershon. cy between Shaffer explained that The court intermediates. motivation to provided Indeed, requires 35 U.S.C. compounds appli the make the claimed recognition context in which although “one of purpose, Comparison cant’s made. between invention was poten suppose subject matter as a skill would prior art and the groups of of the two if the desired tial uses not be achieved whole can 585, 170 USPQ at similar.” Id. a solution utility, for which Stemniski observed analysis. 347. The court excised from the sought, Henze, Graf, Riden, and (CCPA 1950), 1965): (CCPA 1963), held that of certain facts a selection While presump support a alone could structure to a conclusion of nonobvious- case tend *10 obviousness, that: and stated tion of taken alone show ness and others and Riden are To the extent that Henze obviousness, required un- the conclusion expressed with the views grounded on a inconsistent 103 must be der section followed, herein, they longer no will be all the facts.... While weighing of are overruled. purpose obtaining uni- merely for the 1564 Albrecht, 514 F.2d in In re at 348. Henze had USPQ The court 587,
Id.
at
170
(CCPA 1975)
1389,
USPQ
185
585
answered
adjacent homologs
already
limited to
been
indistinguishable
from that
i.e., compounds dif-
compounds,
of known
Commissioner,
stating:
today by the
posed
(CH2) group, by
fering
methylene
by one
Mills,
218,
opinion
that a novel chemi-
the courts in In re
281 F.2d
126 We are of
compound can be nonobvious to
one
Elpern,
1960)
and In re
USPQ
(CCPA
cal
513
art notwith-
having
skill
762,
USPQ
(CCPA 1964).
224
326 F.2d
140
standing
may possess
it
a known
Stemniski,
1565
consider,
prima
deciding
in
compound
which bears no material
whether
novel
facie
made,
case had been
relationship
activity
to the
disclosed for
differences
evidence,
properties
structure
between the
analogs
art
is further
compounds
and those in the
ignored,
nonobviousness
not to be
appellant’s
“notwithstanding
art
failure to
of the claimed invention.
in properties”.
establish actual differences
1396,
USPQ
Id.
at
185
at 590.
6,
Id. at 1344 n.
USPQ
at 409 n. 6. 166
established,
Thus the CCPA
and the
688, USPQ2d
Geiger,
also
2
815 F.2d at
at
followed,
general
Federal Circuit has
(holding
1278
that since a
case
facie
similarity
of structure alone does
rule
established,
of obviousness was not
it was
'prima
of
not make a
case
obvious
results);
unnecessary
unexpected
to show
reason,
ness;
arising
there must be some
Wilder,
compare
In re
457,
563 F.2d
expect
that the claimed
(CCPA 1977)
USPQ
with In re
compounds
will have the Wilder,
USPQ
429 F.2d
applicant.
found
This
(CCPA 1970) (cases reaching contrary re-
pragmatic support
today’s
rule finds
sults as to
science,
state of chemical
wherein few new claims).
imaginative struc
compounds are of such
example
strong
Another
fact-de-
“structurally
similar”
ture
pendence of obviousness determinations is
are not to be found in the
art.7
Heck,
In re
1331, 1332-33,
seen
cites Mod today
Since
Solicitor
(Fed.Cir.1983),
for which Mod was criti
principle
same
where the
differing
issue related to the
Albrecht,
repeat
cized in
we
the admonition
rates of wear between softer outer metal
that Mod must be understood
given
“in a
surfaces and harder inner metal surfaces
Albrecht,
setting”.
factual
at
(Heck’s invention),
aon
camshaft
and the
Lainson,
1395,
precedent, *15 test- has been patentability such authorizes II experience. proven and over decades ed Claims Method the law by applying Patentability is decided no distinction be case; The Board drew specific to each the facts to composition of Dillon’s patentability tween ago transcended approach long reasoned argument claims. At oral a and method as of obviousness deciding question Mills, Solicitor, a from responding to policy. of immutable matter bench, way that Dillon has stated the court at at invention, either as a claiming her “the observed again against cautioned use, despite the as a new composition or freeze into to tendency the Patent Office pertinent to what, at absence general application rules of legal “I know stated: don’t The Solicitor use. best, applicable particu- to are statements apart claim suggest an how to allowable fact situations.” lar might in this exist any other art that from her new com- patent a on Granting Dillon case.” particular discovery of a new her based on positions, is claimed in composition A new use of utility, takes property and unobvious method. process or This form of a already has. public nothing that the away in 35 U.S.C. claiming codified style of Ruschig, See 100(b): pat- adequate (favoring provision § applicant’s process, for means protection “process” ent The term someone possibility method, a new use of a the “mere and includes over machine, manufacture, for some of them might to use some process, wish known pur- matter, applicant’s to material. unrelated purpose” composition of such only the public receives pose). 932, 933, 129 Fong, See for aban- discovery, knowledge of Dillon’s 1961) (“because (CCPA maintained applications are patent doned claiming of such an permit the does not law deprived of an Dillon is not secrecy, but use, the claims are in terms of invention product this new to commercialize incentive or a process ... to a directed statute, underly- use. The this new recognized ways of ..., conventional patenting policy, do not bar Dillon on the dis- claiming predicated inventions new com- simply her because her invention Moreton, use”); covery of a new property might possess also positions composition. known shared [i.e., (“This of form 1961) mere matter should use as claiming a new explana- method] merit to the classical There patentability.”) This on have no effect study new varia- that the incentive to newly discovered applies form composi- claim compounds and known tions a known or whether uses, composition, use of a tions, for new to search order generally 1 D. Chi- composition. new com- new if such be diminished sum, Patents, at 1-174 to -179 patent- 1.03[8][c] can not be compositions § pounds Chisum, Patents, Indeed, (1989) hydrocarbon 2 D. bustion of fuels. Dil- (1989); to -365 2 E. consistently objected at 5-359 lon has to the Board’s § 5.04[8][a] Patents, on Lipscomb, 6:54 at Walker attempt compare her her invention with (1985). 340 to 342 simply own disclosure. Dillon takes the position particulate that her invention of only question for the decision- reducing compositions is unex- and method the claimed method of maker is whether pected compared with the be- person obvious to a use would have been nothing cause teaches or field of the ordinary skill in the invention. suggests Considering it. Dillon’s method evaluating patentability of Dillon’s claims, prior art that neither teaches nor pertinent it is not whether method claims suggests compositions the use of these themselves are known or particulate reduce emissions in combustion solely The issue new or unobvious. inadequate to make a Dillon, whether discovered of obviousness. particulate the reduction of emissions from combustion, would have been obvious in The Board cited In re Merck & light Co., Inc., Perhaps recognizing the dearth of (Fed.Cir.1986), arguing that ob art before the Board as to the method require viousness does not predict absolute claims, argues appeal, the Solicitor ability. does, however, Obviousness re time, the first that Dillon’s method claims quire relationship some between the use *16 simply are drawn to combustion. The So taught in the reference and the use discov licitor states that it would have been obvi by applicant. ered the Merck In the refer fuel composition, ous to combust Dillon’s ence and the claim composition prop even if the itself and its known, were both the uses were sim erties would not have obvious. been As ilar; the court held that the claimed use Durden, the Solicitor cites support prima expected would light be of facie (Fed.Cir. the known use of the compound. reference 1985), wherein the court held that the sub Applying reasoning this to Dillon’s claims stitution of new reactants into a well conclusion, opposite leads to the for Dil process making known chemical of carba- lon’s use is unrelated to the known not, case, compounds in that mate did ren compositions. See, e.g., art itself, der the chemical reaction unobvious re May, which, reactants, except specific for the (CCPA 1978) (claims to use as was disclosed in a reference. analgesics May’s non-addictive com in Durden does not holding The pounds held unobvious from the known use the Commissioner’s thesis. Durden’s pro- as addictive use, cess claim not to a new was method of analgesics, in unpredictable view of the na process making but to a known a com- property). ture of this pound. claiming not Dillon is a chemical prima We conclude that a case of facie reaction; claiming is she new use of a obviousness as to the method claims has composition, in the form of method claims. rejection not been made. The of claims process not a Dillon’s invention is 24-35 is reversed. combustion, reducing but a new method of particulates from combustion. After dec- Conclusion style claiming a ades of this new use as rejection The through of claims 2 method, position the Commissioner’s through through and 24 37 is RE- unpatentable the claims are because “[t]he VERSED. principal any use of fuel is combustion” is frivolous. ARCHER, Judge, dissenting. Circuit
No reference or combination of referenc- es the use of any suggests describes or majority The reverses Board’s deci- particulates orthoester to reduce prima solely com- sion because in its view facie evidentiary record dence, but once (1982 & 35 U.S.C. under obviousness solely “on to focus error it is established IV) established when never be Supp. can case rather prima question use described problem and specific facie of discrimina- suggest directly or on the not addressed than are the inventor case, not issue here is tion.”). Accordingly, art.1 this ed made, taught but have case was clearly would motivated whether composi produce composi- artisan to claimed the skilled Dillon’s whether rather and, due by Dillon claimed and method have been obvious tion and method tion showing non-ob evidence absence of a whole. record as on the determined, correctly viousness, the Board underlying appeal set are facts not view, invention was my opinion and not majority’s forth in will dissent. I therefore patentable. repeated here. claimed be suggested and method way Preliminarily, disagree I with for a reason different albeit framed the issue majority has the ra has disclosed.2 Under which Dillon majority appeal. in this presented examiner af tionale identified ques threshhold opinion states that “[t]he Board, taught firmed circumstances, whether, under such tion fu hydrocarbon adding tetra-orthoesters unpatentability scavenging water purpose of els for Maj. at made.” is deemed obviousness combustion, Dillon whereas prior to clear, made this court has “[t]he 1557. As par reducing the amount of concerned ex concept by the combus produced emissions ticulate procedur but parte patent examination same fuels. orderly way in an to allocate mechanism al 103 it is the Under 35 U.S.C. § per and of going forward the burdens patentable, composition which must examiner and between suasion as upon subjective idea the motivation Piasecki, applicant.” *17 v. composition is based. Jones which that (Fed.Cir. 785, 1471-72, USPQ 787-88 223 1524, 1527-28, 220 Hardy, 727 F.2d so, full eviden- 1984). being once the This (Fed.Cir.1984). an 1021, Accordingly, 1024 established, as it is before tiary record is doing reason for or different additional court, the appeal to this and on the Board done should be prior suggests art what the with the interme associated presumptions prevent conclusion that does not the drop from procedural burdens diate have been obvious invention would claimed must focus case, the decisionmaker Kronig, 539 in the art. to one skilled be to the ultimate solely upon USPQ 425, 1300, 1304, 190 788; 1472-73, USPQ at Id. 223 decided. allege 1976) (CCPA (“Appellants further 1052, Rinehart, 189 531 they addition which that effect of water the 1976); United (CCPA 147 cf. (to service life lengthen the disclose v. Governors Board Postal Serv. States of from the effect catalyst) different 714-17, S.Ct. Aikens, 460 U.S. et al. in Yasui (in water addition disclosed (1983) 1481-83, L.Ed.2d 403 ample Nevertheless, provide al. Yasui et the Title VII under cases discrimination to in- in order add to water motivation procedural is a case method prima facie view yields, and we do not product evi- crease orderly production of device for dewatering deals objective hy cause Elliott majority “There is no states: 1. The its fuel, led rather art that would have fluids than teaching hydrocarbon in the draulic prior nonanalogous claimed com- art teachings skill make related to one of was to solve the that in order unavailing be argument binations here area. Dillon’s ba- confronting Dillon. There is no reasonable solving a teachings are related to cause Elliott’s expecting that art for sis the prior indicated is has pertinent Sweeney have the Deminski, particulate-re- In See re fuel hydrocarbon Maj. at ducing discovered.” she 436, 442, (Fed.Cir. USPQ 313, 315 796 F.2d added). (emphasis Kronig, 1986); cf. 1976). (CCPA challenges combination 2. Dillon arguing that be and Elliott patents Sweeney rejection merely as because nonobviousness, strate evidence of such deficient appellants allege a advan unexpected greatly as novel or enhanced different tage resulting the addition wa results, success, need, long commercial felt from ter. ... here that Yasui [I]t etc., that sufficient claimed invention would not clearly suggests doing appel et al. what have been obvious to the skilled artisan. done, viz., adding lants have water.” In In re Lintner the court stated: Lintner, re added)); In (emphasis appellant sugar The fact that uses for a 1013, 1016, USPQ 560, (CCPA purpose different does alter the con- 1972) (“The appellant sugar fact that uses composi- clusion that its use in a art purpose for a different does not alter the prima would be obvious from facie compo conclusion that its use art purpose disclosed in the references. prima sition would be obvious from patent appli- Differences between purpose disclosed in the references.” cant’s and the art’s motivation for Heck, also In (emphasis added))3; see re adding an USPQ 1038, composition may element to a (Fed.Cir.1983) (“[I]t would composition have been obvi be reflected in the ultimately ous to those skilled art to use them produced. A claimed may together when a differential in wearing possess unexpectedly superior properties ap away desired, though even quality or advantages compared pellant’s particular purpose was differ In compositions. way, the conclu- ent (empha [the art].” sion Graf, added)); sis rebutted and subject the claimed mat- (CCPA 1965) (“Obvious ultimately ter legally held to be nonob- ness is not to be determined on the basis vious. alone.”). purpose 458 F.2d at at 562 Obviousness is determined not on the 1972) added). (emphasis See also 2 D. Chi- argument, produc basis of but on evidence sum, Patents, (1989) at 5-325 § 5.04[6] Blauwe, In re De ined the record. (“The fact that the ‘suggests’ (Fed.Cir. purpose modification for a different is irrel- 1984). Hence, when examiner has evant to the issue of facie obvious- suggests shown that though ness it is relevant to rebuttal of particular purpose, invention for a obviousness.”). applicant upset showing cannot addition, specific problem merely facing by asserting, proof, without *18 applicant the purpose recognized the need not or the of the be all behind Instead, by claimed invention are cases the different. it art before obviousness necessary Gershon, applicant may for the to demon- be established.4 majority attempts holding 3. says to avoid the ness is that which Dillon was instrumental by characterizing being Lintner its facts as discovery ac- to her quote of the claimed invention. See by commodated Solder Removal Co. v. United majority opinion in footnote su- Comm'n, States Int'l Trade pra. (CCPA1978), required facts, weighing balancing majority of all the in- discovery notes that the of the cluding significance problem suggest- problem plaguing source of a art is a part "subject ed versus inventor's solution matter as a whole” to be ("where obviousness, to another determining results be citing considered in unexpected so Sponnoble, as to a conclusion of In re 237, nonobviousness”) making (CCPA 1969). the ultimate Maj. deter- at 1562. See also respect Maj. mination with to obviousness. Paper Eibel Process Co. v. Minnesota & Ontario Lintner, Co., 45, 67-68, Kronig, 329-30, 1565-66. and Heck are each 261 U.S. 43 S.Ct. weighing balancing ap- (1923). consistent with the or L.Ed. applica- That doctrine has no case, however, proach articulated in Solder Removal. While tion in this where Dillon has not appearing adopt approach by citing indicated that she has discovered the source of Removal, quoting majority particulate problem, from Solder in- thereby emission mak- only suggestion Chisum, stead holds that the or motiva- simple. its solution See D. Pat- ents, (1989) ("The tion from the art which can be sufficient at 5-353 Eibel doc- 5.04[7] only to establish even a applies case of obvious- trine where the inventor has dis- (CCPA 1967), they provide comparison cause between a Sweeney composition disclosed ref- court stated: (although apparently alone Dillon erence fail to prior art does Although the cited reference, having of this was not aware suggest either the existence disclose or cause, originally composition) we claimed that same problem or its appellants’ not teach agree composition encompassed by that the art does Dil- cannot and the problem. suggest a solution to provide or lon’s claims and thus could evi- arti especially The cited the Gershon Dil- showing dence the nonobviousness of cle, superiori unquestionably teaches Examples through III lon’s invention. solutions” ty of “buffered acidic fluoride XII, (an trimethyl-orthoacetate orthoester reducing enamel so effectively dental taught by Sweeney) was of the formula think that one of lubility in vitro. We particulate shown to reduce the amount of in the dentifrice art would skill 14.61, # 2 emissions from diesel fuel persuaded to use buffered acidic thus be 29.90, 18.57, 12.01, 18.09, 11.30, (0), 10.26, purpose fluoride dentifrices for percent, respectively. In Exam- and 27 solubility enamel in vivo. reducing dental XVIII, ples through tetra-methyl-or- XIII use of buffered dentifrices Such obvious (a tetra-orthoester) thocarbonate provide a solution to inherently 6.7, particulate by only emissions reduced though an ade appellants’ problem, even 7.9, 10.8, 16.6, 12.8, percent, 10.3 re- explanation of the rea quate theoretical evidence, spectively. Board This as the buffering incorporation of why son found, prove the does not tend to nonob- dentifrices agents in acidic fluoride It, in- viousness of the claimed invention. superior RES values is achieves stead, only shows that a within art. We think it is found in the cited Sweeney’s tends to exhibit an disclosure clearly sug that the sufficient particulate-reducing ability greater even doing applicants what have gests composition Dillon claims. than does the done, although underlying explanation an Accordingly, light done, why other exactly this should employ the art to tetra-orthoesters wa expected superior ben than to obtain and the scavengers ter in fuel mixtures results, suggested taught is not eficial nonobviousness, any evidence of absence of references.[5] cited composi holding that Dillon’s the Board’s (emphasis at 605 Id. at unpatentable method6 claims are tion and case, present the use of original). In the affirmed. and should be is correct scavengers in as water tetra-orthoesters by Sweeney suggested mixtures as fuel regarding cases obviousness inherently solved and Elliott would have majority cited chemical concerning particulate Dillon’s contrary The ma- require a result. do not emissions. erroneously that “a jority states not deemed several specification sets forth (1) the new *19 made unless both in mak- examples that must be considered structurally composition is similar These ing the obviousness determination. (2) composition and compound or especially pertinent here be- reference examples are suggestion replace Accordingly, to recognized problem.” was no there covered the source of a amplifier primary original)). the reference with that (emphasis the case, however, secondary In this it is of the art. Shaffer, majority points equiva- to In re 229 5. The beyond dispute teaches the that Elliott 476, 326, (CCPA 480, 1956), USPQ to 108 329 lency tetra-orthoesters as water between tri- and problem confronting suggest the inven- that the scavengers. by the art in order tor must be addressed solely Maj. consist of the at 6. Dillon’s method claims to be established. for obviousness however, combusting of her easily distinguished process the fuel mixture Shaffer, utility composition of Swee- Shaffer, claims. Since the found that the this case. In court fuel, ney suggest equivalency combustion be- mixtures is as art did not Sweeney/Elliott would also have been amplifiers primary mixture and second- tween 479, USPQ to the skilled artisan. ary Id. at at obvious references. 108 328-29. 1574 expectation possessed by
there is some the related 391, Id. compound compounds art. 137 Indeed, USPQ evidence, at 51. such will have same or similar when record, always utility by applicant,” by must be considered as discovered cit Grabiak, Papesch holding, In re ing, others, the examiner. The among 769 F.2d how- 729, 731, 870, ever, USPQ (Fed.Cir.1985); 871 does not mean that can- 226 obviousness Rosselet, In 847, 850, predicated on the re 347 F.2d not be structural likeness 146 USPQ 183, (CCPA 1965); Chupp, In re of the claimed invention to known useful 185 643, USPQ2d 1437, compounds. 816 F.2d 2 1439 Payne, (Fed.Cir.1987); In re 303, 606 F.2d majority The additional cases cited 314, USPQ 245, (CCPA 1979); 203 Papesch. In re Al In are consistent with Wood, and In re Swan 582 F.2d brecht, 1385, USPQ 514 F.2d 185 590 (CCPA 1978). See Maj. 199 139 (CCPA 1975), CCPA held that a cases, however, at 1560. These do not case of structural obviousness had support prong the second of the stated notwithstanding been established Grabiak test. In the court reversed the claimed novel was disclosed for lacking Board’s decision because it found totally utility compared different similarity sufficient structural between the (local the referenced anesthetic compounds upon known and claimed agent).7 case, versus antiviral In this rejection. the examiner’s There compounds ultimately claimed were held to holding regarding utility was no nonobvious, only but after the examin compounds. claimed referenced While was rebutted rejection er’s obviousness Rosselet, Payne, and Swan Wood evidence that the novel compounds actually compounds claimed and known were of possessed unexpected properties not exhib utility, only fact served to con ited those disclosed in the cited refer firm the inference of fact that the claimed ence. compound would have been obvious based Fine, In re 1071, USPQ2d 837 F.2d 5 on its structural likeness to a useful Lalu, (Fed.Cir.1988); In re 1596 747 F.2d Chupp, compound. 816 F.2d at USPQ In re (Fed.Cir.1984); 223 1257 Mills, 646, USPQ2d 1439; In re 2 281 Grabiak, (Fed. USPQ 769 F.2d USPQ (CCPA Naber, re Cir.1985); 494 F.2d 1960). similarity utility between the Stemniski, USPQ 1974); compounds teaching two was not taken (CCPA 1971); 444 F.2d Likewise, in Chupp, from the In Ruschig, re 343 F.2d the fact the claimed and (CCPA 1965); Lajarte, In re De compounds were herbicides both cannot be (CCPA 1964); requirement transformed into a all Elpern, only cases the examiner can base his obvi Mills, (CCPA 1964); and ousness determinations hav (CCPA 1960), do not the same or similar as that Although hold otherwise. in each of these applicant. cases the court reversed the Board’s deci Papesch, In sion that the claimed inventions would have (CCPA 1963), USPQ 43 a most often cited obvious, been it did so there because case, chemical court re- suggestion in the art whatsoever rejection applicant’s versed the produce the claimed invention. Not one of claims because the Board had failed to proposition these cases stands for the ad *20 consider evidence that the claimed com- by majority validly vanced the sug that a pounds unexpected advantageous exhibited gested producing reason for the claimed flatly majority’s holding applicant.” Maj. 7. This contradicts the erties found the at 1565. prior upon clearly that in order to establish "a obviousness[,] case of The gave art relied in Albrecht reason, expectation, yet there must be some aris- no such an the court ex- ing obviousness, prior expect pressly stage in the that the claimed indicated that at that prop- prosecution, or will have the had been established. (Fed.Cir.1988), support in USPQ2d 1959 purposes of for the is insufficient invention supports the Wright9 decision. While address the its it not 103 because does section case, in I majority the this result the reaches the or because inventor this fact because predict or the not find comfort not do art does disclose prior view, the conflict Wright, my direct unproven benefits alleged but ante, precedent.10 shown our As invention.8 claimed with subjective mo not the does make precedent sum, chemical obvious- myriad the In by the inven purpose or disclosed tivation only majority stand cited the cases ness producing the invention an for claimed tor proposition that a unremarkable the for determining overriding factor in whether unpatentable when compound may be novel from the can be obviousness established structurally similar to is shown to be it Wright, In the teachings prior the compound. In and useful known another although prior sug art court held that case, of obviousness a the inference such pur claimed invention for one gested showing by the by a may overcome be suggest the inven because it did pose, not compound actu- that the claimed applicant Wright’s purpose or as solution unexpected ally “possesses unobvious or him, problem confronting it did not actually pos- properties not beneficial establish obviousness [structurally similar prior art by the sessed holding is based claimed Such invention. Mills, 281 F.2d at In re compound].” wholly and is solely subjective criteria added). (partial emphasis at 516 objective evidence-based odds with the however, not, require or cases do These required by 35 U.S.C. 103 and analysis holds, § that chemi- majority suggest, as the and this of the CCPA decisions only predicated on can be obviousness cal disregard mere articulation which court have the same compounds which art prior motivation behind the purpose or compound. claimed utility as the or con as invention insofar obviousness Albrecht, F.2d at In re See cerned. USPQ at 593. panel of this Consequently, because the decision of
Lastly, majority cites the bind- power to overrule court is without Wright, court in In re Naber, any suggestion art for the Lalu, Ruschig, lack of Stemniski 8. Thus, Wright’spreclusion of obviousness invention. claimed court indicated structural where the not be established where the inventor’s could obviousness (or utility other than or disclosed properties disclosed whatsoever were not addressed process) for the in a chemical an intermediate was not issue. holdings compound. do not These referenced majority’s holding prior art that the "misper- majority that I have states 10.The utility as does the same or similar must show reasoning Wright" and would ceiv[ed] order applicant invention in more, prior holdings of some overrule contrary, the On the obviousness. to establish Slip op. predecessor at 30 n. court. this and our utility cases in these lack of disclosed view, however, majority’s it Contrary to the 9. suggestion any reason or likened to the lack of represents reasoning Wright is the teachings in a combine various to typical jurisprudence. departure from our a "reason case. In "reason to combine” 2.6[1], Adelman, Perspectives, 2- Patent Law case, be “some” teach- there must to combine" (1989) (“In Wright Federal [] 406.2 art. See to combine properly ex- wrongly balance failed to Circuit Rudkin-Wiley Corp., Uniroyal, 1044, Inc. v. unexpected in connection pected and (Fed.Cir.1988). USPQ2d Rollins, invention.”); “PTO mechanical with a cases, Likewise, structural Wrong?", & Tm. Wright 71 J.Pat. Practice: Was for the “some" referenced (1989) "diverges (Wright Off.Soc. 39 Albrecht, sufficient to infer obviousness. intentional, which, precedent if in a manner 1388. change represents rather substantial Practice, (4th law.”; ed. Kayton, 5-36 Patent Wright this court in Diversi has been cited 1989) ("The highwater in the law of what mark Inc., Corp. Century Steps, v. tech obvious is is and is 1988), (Fed.Cir. USPQ2d and In Handbook, Brantley, Law Wright....”); Patent Newell, (Fed.Cir.1989). ap- (1989-90) (Wright provides a "new distinguishable from this one These cases are attempting arguments to rebut proach) to] of considerable of either the because existence 103.’’). rejection under section objective or the evidence of nonobviousness *21 prede- and its precedent of this court cessors, in Wright the decision does not appeal following.
control this and merits no
It limited to its facts if should be
forthrightly overruled.
I would affirm the Board’s decision. Stamford, Conn., Thompson, Frank J. ar-
gued, appellants. for Bartlett, Tarrytown, N.Y., Ernestine C. argued, appellee. herWith on the brief Mayer. Robert T. NEWMAN, Before RICH and Circuit Judges, DUMBAULD, Senior PRODUCTS, REMINGTON Judge.* District INC., Appellants, RICH, Judge. Circuit v. appeal This is from the March
NORTH AMERICAN PHILIPS (unreported) decision of the Patent and CORPORATION, Appellee. Trademark Office Ap Trademark Trial and Nos. 89-1512. (board) peal Board in consolidated cancella Appeals, United States Court of opposition proceedings tion and involving Federal Circuit. the term TRAVEL CARE. North Ameri Philips can Corporation (Philips or Norel-
Jan. 1990. 1co) principal register holds registration 1,340,374 No. of TRAVEL CARE for “elec tric travel irons and wrinkle remover/fab steamers,” ric registered June 2, 1984,Philips On October application filed 527,612 serial No. register the same “adaptor plugs, mark for voltage convert ers, comprising adaptor plugs kits voltage Products, Remington converters.” (RPI) opposition Inc. filed an applica petitioned tion and registra to cancel the proceedings, Opposition tion. The two No. 72,516 15,201, pro Cancellation No. separately they ceeded until reached the board single opin which decided them in a ion, dismissing both because it was of the opinion registra that TRAVEL CARE is a goods ble trademark for the enumerated brings above. RPI appeals. these two single opinion, we reverse both. position It is RPI’s opposition both the proceedings and cancellation that “travel care,” a combination of two common words, descriptive products * Dumbauld, Products, Judge, Edward goods Honorable Senior 1. Norelco Consumer whose Philips’ registration application United States named in District Court for the Western involved, here Philips Corporation, appellee. is a division of North Pennsylvania, sitting by American designation. District of