Lead Opinion
Diane M. Dillon, assignor to Union Oil Company of California, appeals the November 25, 1987, decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO), Appeal No. 87-0944, rejecting claims 2-14, 16-22, and 24-37, all the remaining claims of patent application Serial No. 671,570 entitled “Hydrocarbon Fuel Composition.” We affirm the rejection of all of the claims.
The Invention
Dillon’s patent application describes and claims her discovery that the inclusion of certain tetra-orthoester compounds in hydrocarbon fuel compositions will reduce the emission of solid particulates (i.e., soot) during combustion of the fuel. In this appeal Dillon asserts the patentability of claims to hydrocarbon fuel compositions containing these tetra-orthoesters, and to the method of reducing particulate emissions during combustion by combining these esters with the fuel before combustion.
Claim 2 is the broadest composition claim:
2. A composition comprising: a hydrocarbon fuel; and a sufficient amount of at least one orthoester so as to reduce the particulate emissions from the combustion of the hydrocarbon fuel, wherein the orthoester is of the formula:
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wherein R5, Rs, R7, and R8, are the same or different monovalent organic radical comprising 1 to about 20 carbon atoms.
The broadest method claim is claim 24: 24. A method of reducing the particu-
late emissions from the combustion of a hydrocarbon fuel comprising com-busting a mixture of the hydrocarbon fuel and a sufficient amount of at least*691 one orthoester so as to reduce the particulate emissions, wherein the or-thoester is of the formula:
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wherein R5, R(¡, R7, and Rg, are the same or different monovalent organic radical comprising 1 to about 20 carbon atoms.
The other claims contain additional limitations and thus are narrower in scope.
The tetra-orthoesters are a known class of chemical compounds. It is undisputed that their combination with hydrocarbon fuel, for any purpose, is not shown in the prior art, and that their use to reduce particulate emissions from combustion of hydrocarbon fuel is not shown or suggested in the prior art.
The Rejection
The Board held all of the claims to be unpatentable on the ground of obviousness, 35 U.S.C. § 103, in view of certain primary and secondary references. As primary references the Board relied on two Sweeney U.S. patents, 4,390,417 (’417) and 4,395,267 (’267). Sweeney ’417 describes hydrocarbon fuel compositions containing specified chemical compounds, viz., ketals, acetals, and tri-orthoesters,
The Board cited Elliott U.S. Patent 3,903,006 and certain other patents, including Howk U.S. Patent 2,840,613, as secondary references. Elliott describes tri-or-thoesters and tetra-orthoesters for use as water scavengers in hydraulic (non-hydrocarbon) fluids. The Board stated that the Elliott reference shows equivalence between tetra-orthoesters and tri-orthoesters, and that “it is clear from the combined teachings of these references ... that [Dillon’s tetra-orthoesters] would operate to remove water from non-aqueous liquids by the same mechanism as the orthoesters of Sweeney.”
The Board stated that there was a “reasonable expectation” that the tri- and tetraorthoester fuel compositions would have similar properties, based on “close structural and chemical similarity” between the tri- and tetra-orthoesters and the fact that both the prior art and Dillon use these compounds as “fuel additives.” The Commissioner argues on appeal that the claimed compositions and method “would have been prima facie obvious from combined teachings of the references.” On this reasoning, the Board held that unless Dillon showed some unexpected advantage or superiority of her claimed tetra-orthoes-ter fuel compositions as compared with triorthoester fuel compositions, Dillon’s new compositions as well as her claimed method of reducing particulate emissions are un-patentable for obviousness. It found that no such showing was made.
The Issue
The issue before this court is whether the Board erred in rejecting as obvious under 35 U.S.C. § 103 claims to Dillon’s new compositions and to the new method of reducing particulate emissions, when the additives in the new compositions are structurally similar to additives in known compositions, having a different use, but the new method of reducing particulate emissions is neither taught nor suggested by the prior art.
Claim 2, the broadest composition claim, comprises a hydrocarbon fuel and an amount of tetra-orthoester sufficient to reduce the particulate emissions from the combustion of the hydrocarbon fuel. The other composition claims contain various limitations including a minimum amount of emission reduction to be achieved (claim 3), percentages of ester in the fuel (claims 4, 5, 16, 20, 21), use of different esters (claims 6-10, 17-19), use of different fuels (claims 11-14, 22), and the requirement that the composition be essentially free of alcohol (claims 36, 37).
The Board stated in its opinion that, to the extent that appellant had not chosen to separately argue the patentability of the appealed claims, “they stand or fall together,” citing In re Kaslow,
The Board found that the claims to compositions of a hydrocarbon fuel and a tetraorthoester were prima facie obvious over Sweeney ’417 and ’267 in view of Elliott and Howk. We agree. Appellant argues that none of these references discloses or suggests the new use which she has discovered. That is, of course, true, but the composition claims are not limited to this new use; i.e., they are not physically or structurally distinguishable over the prior art compositions except with respect to the orthoester component. We believe that the PTO has established, through its combination of references, that there is a sufficiently close relationship between the tri-or-thoesters and tetra-orthoesters (see the cited Elliott and Howk references) in the fuel oil art to create an expectation that hydrocarbon fuel compositions containing the tetra-esters would have similar properties, including water scavenging, to like compositions containing the tri-esters, and to provide the motivation to make such new compositions. Howk teaches use of both tri- and tetra-orthoesters in a similar type of chemical reaction. Elliott teaches their equivalence for a particular practical use.
Our case law well establishes that such a fact situation gives rise to a prima facie case of obviousness. See In re Shetty,
Appellant cites In re Wright,
This court,. in reconsidering this case in banc, reaffirms that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie case. Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does
Under the facts we have here, as described above, we have concluded that a prima facie case has been established. The art provided the motivation to make the claimed compositions in the expectation that they would have similar properties. Appellant had the opportunity to rebut the prima facie case. She did not present any showing of data to the effect that her compositions had properties not possessed by the prior art compositions or that they possessed them to an unexpectedly greater degree. She attempted to refute the significance of the teachings of the prior art references. She did not succeed and we do not believe the PTO was in error in its decision.
Appellant points out that none of the references relates to the problem she confronted, citing In re Wright, and that the combination of references is based on hindsight. It is clear, however, that appellant’s claims have to be considered as she has drafted them, i.e., as compositions consisting of a fuel and a tetra-orthoester, and that Sweeney ’417 and ’267 describe the combination of a liquid fuel with a related compound, a tri-orthoester. While Sweeney does not suggest appellant’s use, her composition claims are not limited to that use;
Appellant attacks the Elliott patent as non-analogous art, being in the field of hydraulic fluids rather than fuel combustion. We agree with the PTO that the field of relevant prior art need not be drawn so narrowly. As this court stated in In re Deminski,
[t]he determination that a reference is from a nonanalogous art is therefore two-fold. First, we decide if the reference is within the field of the inventor’s endeavor. If it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved.
Following that test, one concerned with the field of fuel oils clearly is chargeable with knowledge of Sweeney ’417, which discloses fuel compositions with tri-orthoes-ters for dewatering purposes, and chargeable with knowledge of other references to tri-orthoesters, including for use as dewa-tering agents for fluids, albeit other fluids. These references are “within the field of the inventor’s endeavor.” Moreover, the statement of equivalency between tri- and tetra-orthoesters in Elliott is not challenged. We therefore conclude that Elliott is not excludable from consideration as non-analogous art. It is evidence that supports the Board’s holding that the prior art makes the claimed compositions obvious, a conclusion that appellant did not overcome.
Appellant urges that the Board erred in not considering the unexpected results produced by her invention and in not considering the claimed invention as a whole. The Board found, on the other hand, that no showing was made of unexpected results for the claimed compositions compared with the compositions of Sweeney. We agree. Clearly, in determining patentability the Board was obligated to consider all the evidence of the properties of the claimed invention as a whole, compared with those of the prior art. However, after the PTO made a showing that the prior art compositions suggested the claimed compositions, the burden was on the applicant to overcome the presumption of obviousness that was created, and that was not done. For example, she produced no evidence that her compositions possessed properties not possessed by the pri- or art compositions. Nor did she show that the prior art compositions and use were so lacking in significance that there was no motivation for others to make obvious variants. There was no attempt to argue the relative importance of the claimed compositions compared with the prior art. See In re May,
Appellant’s patent application in fact included data showing that the prior art compositions containing tri-orthoesters had equivalent activity in reducing particulate emissions (she apparently was once claiming such compositions with either tri-or-thoesters or tetra-orthoesters). She asserts that the examiner used her own showing of equivalence against her in violation of the rule of In re Ruff,
Other Claims
As indicated above, the Board held that it would not consider the appealed claims sep
Appellant also argued in her brief to the Board that she “must contest” the examiner’s position concerning claims limited to no more than 5 or 9 volume percent added orthoester, mentioning claims 16-21 and 27-31. The Board did not expressly deal with these claims, but it is clear to us that, since these limits do not result in an amount of ester different from that disclosed to remove water in Sweeney ’417, and no criticality is shown for these limitations, the subject matter of these claims has not been shown to have been nonob-vious.
Regarding the method claims, the Commissioner urges affirmance, citing In re Durden,
We make no judgment as to the patenta-bility of claims that Dillon might have made and properly argued to a method directed to the novel aspects of her invention, except to question the lack of logic in a claim to a method of reducing particulate emissions by combusting. Suffice it to say that we do not regard Durden as authority to reject as obvious every method claim reading on an old type of process, such as mixing, reacting, reducing, etc. The materials used in a claimed process as well as the result obtained therefrom, must be considered along with the specific nature of the process, and the fact that new or old, obvious or nonobvious, materials are used or result from the process are only factors to be considered, rather than conclusive indicators of the obviousness or nonob-viousness of a claimed process. When any applicant properly presents and argues suitable method claims, they should be examined in light of all these relevant factors, free from any presumed controlling effect of Durden. Durden did not hold that all methods involving old process steps are obvious; the court in that case concluded that the particularly claimed process was obvious; it refused to adopt an unvarying rule that the fact that nonob-vious starting materials and nonobvious products are involved ipso facto makes the process nonobvious. Such an invariant rule always leading to the opposite conclusion is also not the law. Thus, we reject the Commissioner’s argument that we affirm the rejection of the method claims under the precedent of Durden.
However, appellant did not argue in her brief the separate patentability of her method claims. The statement in her brief to the Board that “the invention ‘as a whole’ includes the property of the claimed compositions—which property is taken advantage of in the method claims” (Brief at 22, J.App. at 112) is not such a separate argument, since it implies more an added argument for the patentability of the composition claims than an argument that, even if the claimed compositions are found to have been obvious, the claimed methods were nonobvious for particularly stated reasons. Moreover, no such reasons were particularly stated by Dillon. We will therefore not analyze these claims separately and affirm the Board’s rejection on that basis.
The strong assertions by the dissent and its treatment of some of the case law impel us to make the following comments:
The dissent argues that our decision is “contrary to the weight and direction of ... precedent, as embodied in over three decades of decision”; that we are resurrecting the “Hass-Henze” Doctrine, which was “discarded thirty years ago”; and that our holding today “changes what must be proved in order to patent a new chemical compound and composition and its new use, and thus changes what is patentable.” We have done none of the above.
What we have done is to decide the case before us on the basis of long-established principles which had provided a stable understanding of the chemical patent law until the issuance of the original panel opinion in this case which we have now vacated. Our intent is to restore the law to its state existing before that panel opinion.
The length of the dissent and the number of cases it discusses may convey the impression that the weight of past jurisprudence is contrary to our holding today. That is not the case. The cited cases are simply not controlling on the facts of the present case or they are not contrary. Many do not deal with the requirements of a prima facie case. Some involve process claims, not compound or composition claims. Others are not pertinent for other reasons.
In brief, the cases establish that if an examiner considers that he has found prior art close enough tq the claimed invention to give one skilled in the relevant chemical art the motivation to make close relatives (ho-mologs, analogs, isomers, etc.) of the prior art compound(s), then there arises what has been called a presumption of obviousness or a prima facie case of obviousness. In re Henze,
Exactly what facts constituted a prima facie case varied from case to ease, but it was not the law that, where an applicant asserted that an invention possessed properties not known to be possessed by the prior art, no prima facie case was established unless the reference also showed the novel activity. There are cases, cited in the dissent, in which a prima facie case was not established based on lack of structural similarity. See In re Grabiak,
For example, the dissent quotes a statement in Grabiak that “[w]hen chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made.”
One case cited by the dissent as “rejecting the PTO’s interpretation of Henze as establishing a ‘legal presumption’ of obviousness” was In re Mills,
We will not review all the cases cited in the dissent, but Stemniski is an important case, for it overruled Henze and In re Riden,
[w]here the prior art reference neither discloses nor suggests a utility for certain described compounds, why should it be said that a reference makes obvious to one of ordinary skill in the art an isomer, homolog or analog or related structure, when that mythical, but intensely practical, person knows of no “practical” reason to make the reference compounds, much less any structurally related compounds?
Id. at 586,
Albrecht followed this line of thinking when it held that the prior art compound so irritated the skin that it could not be regarded as useful and therefore did not create a motivation to make related compounds.
Properties, therefore, are relevant to the creation of a prima facie case in the sense of affecting the motivation of a researcher to make compounds closely related to or suggested by a prior art compound, but it is not required, as stated in the dissent, that the prior art disclose or suggest the properties newly-discovered by an applicant in order for there to be a prima facie case of obviousness.-
The dissent cites the seminal case of Papesch, suggesting that it rejected the principle that we now “adopt,” thereby implying that we are weakening Papesch. We are doing nothing of the sort. Papesch indeed stated that a compound and all of its properties are inseparable and must be considered in the determination of obviousness. We heartily agree and intend not to retreat from Papesch one inch. Papesch, however, did not deal with the requirements for establishing a prima facie case, but whether the examiner had to consider the properties of an invention at all, when there was a presumption of obviousness.
The dissent refers to a number of cases, including In re Lunsford,
The dissent asserts that the Shetty case “diverg[ed] from the weight of [the court’s] precedent” in holding that a prima facie case was made based on similarities of structure. The court, in that opinion, accepted the prima facie case and concluded ' that “appellant ha[d] offered no evidence of unobviousness, as by showing an actual difference in properties.”
The dissent mentions positions advanced by the Commissioner, including citing the In re Mod,
Other cases, e.g., In re Gyurik,
Another example of the lack of direct pertinence of a case quoted in the dissent is May, which the dissent cites as an example of the consistent line of decisions to the effect that “both structure and properties must be suggested in the prior art before a prima facie case of obviousness was deemed made.” This case does not state that both structure and properties “must” be suggested. The claimed and prior art compositions were both disclosed as having analgesic activity; it was conceded that a prima facie case was made out, but the court concluded that applicants had rebutted the presumed expectation that structurally similar compounds have similar properties with a showing of an actual unexpected difference of properties between the claimed compound and the prior art.
Properties must be considered in the overall evaluation of obviousness, and the lack of any disclosure of useful properties for a prior art compound may indicate a lack of motivation to make related compounds, thereby precluding a prima facie case, but it is not correct that similarity of structure and a suggestion of the activity of an applicant’s compounds in the prior art are necessary before a prima facie case is established.
Conclusion
We affirm the Board's decision rejecting claims 2-14, 16-22, and 24-37.
AFFIRMED.
ARCHER, Circuit Judge, with whom MARKEY and MICHEL, Circuit Judges, join, joining-in-part.
I join the majority opinion except to note that the comments on In re Durden,
Notes
. A panel of this court heard this appeal and reversed the Board on December 29, 1989.
. Tri-orthoesters have three —OR groups bonded to a central carbon atom, and the fourth carbon bond is to hydrogen or a hydrocarbon group ( — R); they are represented as C(R)(OR)g. Tetra-orthoesters have four —OR groups bonded to a central carbon atom, and are represented as C(OR)4; see Dillon's claims, supra.
. The earlier, now-withdrawn Dillon opinion, this opinion, and the dissent cite and rely on cases involving claims to chemical compounds, whereas this case involves compositions. The reason for this reliance is that, in this case, the principal difference between the claimed and prior art compositions is the difference between chemical compounds, viz,, tri-orthoesters and tetra-orthoesters. Cases dealing with chemical compounds are therefore directly analogous here and, in view of the history of this case and its in banc status, we will make much comment on these cases in this opinion. We do not, however, intend to imply that in all cases involving claimed compositions, structural obviousness between involved chemical compounds necessarily makes the claimed compositions pri-ma facie obvious.
. The dissent misinterprets this comment as indicating that claims to new compounds and compositions must contain a limitation to a specific use, and states that past cases have rejected this proposition. Our comment only points out that the composition claims on appeal are not structurally or physically distinguishable from the prior art compositions by virtue of the recitation of their newly-discovered use.
. See M.A. Litman, Obvious Process Rejections Under 35 USC 103, 71 JPTOS 775 (1989); H.C. Wegner, Much Ado About Durden, 71 JPTOS 785 (1989).
Dissenting Opinion
with whom COWEN, Senior Circuit Judge, and MAYER, Circuit Judge, join, dissenting.
The court today resolves certain disparities in the extensive body of precedent on the question of obviousness of new chemical compounds and compositions. However, these disparities are resolved in a way that is contrary to the weight and direction of this precedent, as embodied in over three decades of decision. The court departs from its considered development of the law governing patentability of new chemical compounds and compositions, and reinstates a rule of “structural obviousness”. In so ruling the court not only rejects the weight of precedent, but also errs in the application of 35 U.S.C. §§ 101, 102, and 103.
The majority’s holding that prima facie obviousness of new chemical compounds and compositions is determined based only on structural similarity to prior art compounds and compositions having a known use
Judicial decisions over the past three decades established the general rule that the determination of prima facie obviousness of new chemical compounds and compositions and their uses can not be based on chemical structure alone, but must also include consideration of all their properties, including those discovered by the applicant. This rule had important procedural and substantive consequences during patent examination, for it determined the kind of evidence and proof that was required of a patent applicant. The ruling of this in banc court changes what must be proved in order to patent a new chemical compound or composition, and thus changes what is patentable.
The body of precedent establishing the burdens of modern patent examination was developed in judicial decisions applying the 1952 Patent Act. As I shall discuss in greater detail, when patent examination showed that the prior art suggested the inventor’s new chemical structure and the inventor’s newly discovered property and use, a prima facie case of obviousness of the new chemical compound or composition and its use was deemed made.
The inventor could, of course, argue that the differences from the prior art were such that a prima facie case was not made. And the inventor could rebut the prima facie case of obviousness, by showing some unexpected difference in structure or properties and use, not apparent from the teachings of the prior art. Such rebuttal was generally presented in the form of comparative experimental data, whereby the inventor demonstrated that the properties of his or her new chemical compound or composition achieved some unobvious or unexpected result or advantage, as compared with the actual properties of the prior art structure. This rebuttal often required the inventor to go beyond the general teachings in the prior art, and prove that the prior art compound did not, in fact, possess the specific property and advantage of the new compound or composition. Such proofs were invariably required when the prior art suggested the general property and use discovered by the applicant. Many dozens of decisions of the CCPA and this court illustrate this procedure, and the variety of factual circumstances in which it has been invoked.
In accordance with the court’s in banc holding,
The applicant is thus required to show “unexpected” properties and results, whether or not the prior art provides an expectation or suggestion of the properties and results disclosed in the patent application. And unless the applicant proves that the prior art structure does not actually possess the same unobvious property that the applicant discovered for the new structure, the court holds today that the new chemical compound or composition is not patentable. This is an incorrect application of the patent statute, and a rejection of the wisdom of precedent. Therefore, respectfully, I dissent.
I
THE LAW
A
The In Banc Issue
Diane M. Dillon appeals the decision of the PTO Board of Patent Appeals and Interferences, which had rejected all of Dillon’s claims on the basis that “The claimed subject matter would have been prima fa-cie obvious from the combined teachings of the references.” The Commissioner, asking the court to choose between divergent decisions of the CCPA, stated the PTO position that prima facie obviousness should be based on chemical structure alone:
[I]f the prior art suggests an inventor’s compound or composition per se, that compound or composition would be pri-ma facie obvious, regardless of the properties disclosed in the inventor’s application.
Commissioner’s brief at 24.
The majority of the in banc court adopts the Commissioner’s position, expressly rejecting the panel’s position that the properties and use discovered by the applicant must be considered in connection with determination of the prima facie case under section 103, thereby overruling all prior decisions that so held.
I would hold that determination of whether a prima facie case of obviousness has been made requires consideration of the similarities and differences as to structure and properties and utility, between the applicant’s new compounds or compositions and those shown in the prior art. The Graham [v. John Deere Co.,
Of course not all these aspects will loom large in every case, but when present they must be considered. They are as pertinent to determination of the prima facie case as they are to the determination that is made after rebuttal evidence is adduced by the applicant. Structure alone, without consideration of the applicant's newly discovered properties, is an incomplete focus for consideration of these factors.
B
The Prima Facie Case
The prima facie case, as used in patent examination, means not only that the evidence of the prior art reasonably allows the examiner’s conclusion of unpatentability, but also that the prior art compels such a conclusion as a matter of law, if the applicant produces no evidence to rebut it. Black’s Law Dictionary, 1071 (5th Ed.1979); In re Piasecki,
Patentability is determined, in the first instance, by examination of the patent application in the PTO. The prior art is searched by the patent examiner, who determines whether a prima facie case of unpatentability is made based on what was known in the prior art. Piasecki, supra. The prima facie rejection may be challenged by the applicant on grounds such as that the rejection is insufficiently supported, or incorrect, or based on illogical reasoning; or, if a prima facie case is made, evidence may be adduced in rebuttal. In re Heldt,
The initial determination by the patent examiner is critical to further proceedings, for the presence or absence of a prima facie case of-obviousness controls the need for the applicant to adduce rebuttal evidence of unobviousness. The procedure serves to clearly allocate the burdens of going forward and of persuasion as between the examiner and the applicant. In re Johnson,
While many judicial decisions turn on the question of adequacy of the rebuttal evidence, the concern of the in banc court today is the issue of the prima facie case. For when, as here, no rebuttal evidence is presented, determination of the prima fa-cie case is decision of the question of pat-entability.
As illustrated in Dillon’s case, the question of whether there is a prima facie case of obviousness controls whether Dillon is required to prove that her newly discovered property of particulate (soot) reduction during combustion is not actually possessed by the prior art composition, when the prior
Heretofore, the courts generally recognized a controlling distinction between the two principal types of factual situations that arise when a patent applicant’s new chemical compound or composition has a structure that is “similar” to chemical structures shown in the prior art: (1) those where the prior art suggests, at least in general terms, that the new chemical compound or composition will have the applicant’s newly discovered property and use; and (2) those where it does not. These factual situations have had different consequences with respect to whether a prima facie case of obviousness was made. The difference turned on whether or not the structure and properties and use of a new chemical compound or composition were suggested in the prior art. The distinction determined whether the applicant was required to come forward with rebuttal evidence, which often was in the form of new technological information not known to the prior art, in order to establish an “unexpected” difference between the properties discovered by the applicant and those actually possessed by the prior art structure.
This distinction brought a consistent application of the law of 35 U.S.C. § 103 to the examination of chemical inventions, for it established the framework wherein the law was applied to the facts of each case. The court today rejects this distinction, holding in banc that it suffices to show prima facie obviousness whenever the pri- or art describes a similar chemical structure, provided only that the prior art gives some “reason or motivation” to make the claimed chemical structure, “regardless of the properties disclosed in the inventor’s application”, in the Commissioner’s words. This position is contrary to the weight and direction of precedent, as I shall illustrate, and is contrary to the statutory imperatives of Title 35.
C
Precedent
It is critical to an effective patent system that there be consistent law, consistently applied, despite the great diversity of technologies that the patent system must serve. The law that is applied in determining whether a prima facie case of obviousness is made, as to new chemical compounds and compositions and their uses, has evolved from analysis of many different factual situations. The large number of decisions on this issue, of this court and the CCPA, produced a rich body of precedent.
The following outline of precedent is chronological, and has its roots in cases decided before enactment of the 1952 Patent Act.
For a while, during an earlier period of modern chemistry, “structural obviousness” alone was deemed to create a presumption of unpatentability. Leading decisions were In re Hass,
The burden is on the applicant to rebut that presumption by a showing that the claimed compound possesses unobvious or unexpected beneficial properties not actually possessed by the prior art homologue.
Henze,
It is immaterial that the prior art homologue may not be recognized or known to be useful for the same purposes or to possess the same properties as the claimed compound.
Id. (emphasis in original).
The courts soon expressed dissatisfaction with this rule. See the discussion, and cases cited, in In re Mills,
Throughout the 1960’s, and thereafter, the CCPA stressed that properties as well as structure were material to the patenta-bility of new chemicals, and must be considered. The case of In re Papesch,
The Papesch court rejected the principle that this court now adopts, for in Papesch the court held that the prior art must disclose “at least to a degree” the applicant’s desired property and utility. The court said:
The other factor of importance ... is that the prior art disclosure was not merely of a structurally similar compound but also, at least to a degree, of the same desired property relied on for the patentability of the new compound. Such an “other factor” must of course be considered because it bears on the obviousness of the compound, which is, realistically and legally, a composite of both structure and properties.
Id. at 392,
Although the CCPA and the Patent Office at the time of Papesch did not generally use the terminology “prima facie case”, the CCPA’s holding that a compound is “realistically and legally, a composite of both structure and properties”, underlies the requirement that both structure and properties be considered. Papesch and its
In In re De Lajarte,
In the total absence of evidence in the record to indicate that the amber glass disclosed by Lyle would be expected to have desirable electrical insulating properties, we can find no justification for placing the burden on applicant to conduct experiments to determine the insulating properties of the colored glass disclosed by Lyle.
Id. at 874,
If one were making a colorless glass free of carbon and sulfur, there would be little reason for using the Lyle formula since it was primarily designed to enhance color stability. In the absence of any showing why it would be obvious to modify Lyle’s glass, a “103 rejection” must be reversed.
Id. at 875,
In In re Ruschig,
On the obviousness issue, the vague “basket” disclosure of possible uses in the French and Swedish patents and the equally vague disclosure of the Martin patent are unimportant. What is important is the fact that the utility discovered by the appellants is not disclosed in the prior art.
Id. at 977,
That the utility discovered by the applicant must be at least suggested in the prior art, in order to establish prima facie unpa-
For example, the Commissioner cites In re de Montmollin,
The principle that both structure and properties must be considered in connection with the prima facie case was directly treated in In re Rosselet,
We agree with appellant’s admonitions against deciding questions of chemical obviousness on the basis of structure alone, whether by means of a “mechanistic overlay” or otherwise. However, we think appellants have failed to present adequate evidence to overcome a prima facie showing of obviousness by reason of the admitted “gross structural similarities” of the art compounds, coupled with the fact those compounds are shown to have utility in the same area of pharmacological activity.
Id. at 850,
Other decisions during this period illustrate varying judicial emphases, depending on the facts. When the compounds were quite closely related in chemical structure, as in the homologs and analogs of In re Riden,
A compound is not, however, merely a structural formula; its properties as part of the whole must be considered.
Id. at 864,
In In re Lunsford,
Just how one finds the compounds “obvious” in the first instance, the examiner does not say, but apparently he envisions a comparison of structures only. That such an approach is not sanctioned by this court, although concededly the law was less well defined in June 1961, the date of the Examiner’s Answer, can be seen, e.g., in In re Krazinski,347 F.2d 656 [52 CCPA 1447],146 USPQ 25 [ (CCPA 1965) ]; In re Ruschig,343 F.2d 965 [52 CCPA 1238],145 USPQ 274 [(CCPA 1965)]; In re Ward,329 F.2d 1021 [51 CCPA 1123],141 USPQ 227 [(CCPA 1964)]; In re Lunsford,327 F.2d 526 [51 CCPA 1000],140 USPQ 425 [(CCPA 1964)]; In re Riden, Jr.,318 F.2d 761 [50 CCPA 1411],138 USPQ 112 [ (CCPA 1963) ]; In re Papesch,315 F.2d 381 [50 CCPA 1084],137 USPQ 43 [ (CCPA 1963) ]; In re Petering,301 F.2d 676 [49 CCPA 993],133 USPQ 275 [(CCPA 1962)]; In re Lambooy, 300*706 F.2d 950 [49 CCPA 985],133 USPQ 270 [(CCPA 1962)].
Id. at 382 n. 2,
[T]he discovered activities or properties are part of the things claimed, the compounds .... [W]e, like the Patent Office, are required by the clear wording of section 103 to regard it as a relevant portion of the invention “as a whole.”
Id. at 384,
In a companion case, In re Lunsford,
The argument that the “subject matter as a whole” under 35 U.S.C. 103 includes the compound and its utility is considered to be without merit.
Id. at 391,
[I]t is reasonably clear that the examiner considered only the difference in structures between the claimed compounds and the prior art compounds.
Appellant was entitled to have differences between the claimed invention, the subject matter as a whole, and the prior art references of record evaluated.
Id. (emphases in original). Referring to 35 U.S.C. § 103, the court wrote:
It is not believed that [a person of ordinary skill in the art] would consider only the structures of the compounds[.]
Id. (emphasis in original).
These judicial analyses, written before the terminology of the prima facie case became routine in patent examination, nonetheless placed the burden on the examiner to come forward with prior art sufficient to support any purported suggestion of the applicant’s properties:
Moreover, as a matter of law under 35 U.S.C. 103, the examiner must substantiate his “suspicions” on the basis of facts drawn from proper prior art. The issue to be resolved requires more than “suspicions;” it requires facts.
Id. (footnote omitted, emphasis in original).
The CCPA put “structural obviousness” in perspective when, again receiving this argument from the Commissioner, the court commented on the large numbers of yet-unmade compounds that would be “structurally obvious” to a chemist:
The solicitor has reargued in his brief the question of the obviousness of chlorpro-pamide to a chemist as a compound, that is, what we sometimes refer to as its “structural obviousness.” This is not a matter of dispute. We think appellant would concede that all 1,237,464 compounds he claims to be within the Rus-chig et al. disclosure or the 38,556 compounds he claims to be within the broadest patent claim, are structurally obvious.
In re McLamore,
In re Mod,
Mod has often been distinguished. See, e.g., In re Albrecht,
We are of the opinion that a novel chemical compound can be nonobvious to one having ordinary skill in the art notwithstanding that it may possess a known property in common with a known structurally similar compound.
Id. at 1395-96,
Continuing the chronological review: In In re Jones,
The procedural and substantive rigor of the prima facie case in patent examination is again illustrated in In re Godron,
We agree that it is improper to require comparative evidence where a reference is devoid of any suggestion of the claimed invention.
Id. at 855,
This procedure was similarly applied to chemical process claims. For example, in In re Freed,
In In re Kuderna,
In In re Hoch,
On the face of it, “treatment of plant diseases” could mean usefulness in controlling plant-infesting organisms.... We are thus not persuaded that herbicidal properties are “contraindicated” by the [prior art] patent.
Id. at 1343,
The classical reasoning of the prima fa-cie case is again illustrated for composition claims in In re Susi,
Another routine illustration of the prima facie case based on similarity of both structure and properties, between the prior art and the claimed compound, is seen in In re Ackermann,
In In re Stemniski,
Henze, its predecessors and its progeny have met with their share of criticism over the years, both in this court, in other courts, and elsewhere.
Id. at 587,
To the extent that Henze and Riden are inconsistent with the views expressed herein, they no longer will be followed, and are overruled.
Id. at 587,
In In re Murch,
In In re Freeman,
We have recently pointed out that the rule derived from Mod and de Montmol-lin by the Patent Office is not supported by those cases.
Id. at 1322,
is strong enough to establish a prima facie case, i.e., one which would prevail in the absence of rebuttal evidence, we must go on to examine the evidence of non-obviousness before the legal conclusion called for by section 103 can be reached.
Id. The court stressed the need to consider all the evidence.
The claimed invention in In re Mochel,
No suggestion appears in the record of a purpose for including MgO in sodium glasses and no teaching of identical effects of secondary components in sodium and lithium glasses. We do not consider it “fair to assume” [quoting the examiner] such identity. We cannot, therefore, sustain the finding of prima facie obviousness.
Id. at 641,
In In re Cescon,
It has long been our position that a compound and its properties are inseparable and that no property can be ignored in determining patentability over the prior art.
Id. at 1334,
Nothing in the prior art suggests any relationship between ortho substitution in the 2-phenyl ring [the structural difference from the prior art] and the prop*710 erties disclosed and illustrated in appellant’s specification.
Id. at 1334,
Since there was nothing to indicate that the compounds, when made, would have these properties, it was not obvious to make the compounds. In such a case the allowance of claims to the compounds must depend on the proposition that it was unobvious to conceive the idea of producing them, within the meaning of Title 35 U.S.C., Section 103.
Cescon,
These cases illustrate the CCPA’s continuing rejection of the “structural obviousness” theme, on the rationale that unless there was a reason or motivation shown in the prior art to make the particular structural change that the applicant made, in order to achieve the properties that the applicant was seeking, “it was not obvious to make the compounds.” Id. As the court explained, the “idea” of new compounds is not separable from the properties that were sought by the inventor when making the compounds. Structure and properties are essential components of “the invention as a whole”, in the words of section 103.
In In re Taborsky,
Since we hold that the prior art of record fails to establish that the fluoro-substi-tuted compounds recited in appellant’s claims are prima facie obvious, it is unnecessary to consider any comparative evidence with respect to the properties of these compounds.
Id. at 781,
Only when the prima facie case was established by the prior art was the applicant required to develop comparative evidence. It is as much an obligation to avoid imposing unnecessary burdens on the applicant, and on the Patent Office, as it is to assure compliance with the law. See, e.g., In re Seigneurin,
The no-utility exception that is recognized in the majority opinion is seen in the
Where such closely structurally related compounds are concerned, actual unexpected differences in properties are required to overcome a prima facie case of obviousness. Even though the present compounds may exhibit an unexpected property as anti-virals, they are obvious as anesthetics.
Id. at 1392,
This court has several times recently expressed its position on the role of the properties of chemical compounds in assessing their obviousness under § 103. See In re Taborsky,502 F.2d 775 ,183 USPQ 50 (CCPA 1974); In re Blondel,499 F.2d 1311 ,182 USPQ 294 (CCPA 1974); see further In re Murch,464 F.2d 1051 [59 CCPA 1277],175 USPQ 89 (CCPA 1972); In re Lintner,458 F.2d 1013 [59 CCPA 1004],173 USPQ 560 (CCPA 1972).
Id. at 1394,
A newly discovered activity of a claimed novel compound which bears no material relationship to the activity disclosed for the prior art analogs is further evidence, not to be ignored, of the nonobviousness of the claimed invention.
Id. at 1396,
In In re Albrecht,
There seems to be little doubt that the Patent and Trademark Office would not have entertained such a comparison if initiated by appellants because they have no support in their specification for use of the claimed compounds as anesthetics. See In re Davies,475 F.2d 667 ,177 USPQ 381 (CCPA 1973).
Id. at 1389,
In In re Lamberti,
In view of the foregoing, and considering the claimed invention as a whole vis-a-vis the evidence produced by the PTO, which shows both a close structural similarity between the prior art compounds and the claimed compounds and a close similarity between the disclosed uses, we hold that appellants’ invention would have been obvious to one of ordinary skill in the pertinent art.
Id. at 751,
The majority has cited In re Shetty,
However, the Shetty court allowed the process claims (to the new use),
The Patent Office has failed to show a reasonable expectation, or some predictability, that [a reference] compound would be an effective appetite suppressant if administered in the dosage disclosed by [another reference].
Id. at 86,
Despite the occasional aberration illustrated by Shetty, the CCPA decisions became remarkably consistent in requiring that both structure and properties must be suggested in the prior art before a prima facie case of obviousness was deemed made, whether for composition claims or process claims. E.g., In re May,
Similar reasoning was applied to claims to a new use of a known compound in, e.g., In re Herschler,
We do not find it necessary to reach the question of the weight to be given the papers presented to the New York Academy of Sciences in that appellant has no prima facie showing of obviousness to rebut.
Id. at 702 n. 9,
Over the remaining years of the CCPA’s existence its opinions were steadfast in requiring consideration of both structure and properties in determinations of prima facie obviousness. Precedent had ripened, as exceptions diminished. See Kotteakos v. United States,
For, as with all lines which must be drawn between positive and negative fields of law, the precise border may be indistinct, but case by case determination of particular points adds up in time to discernible direction.
Further illustrations of the direction established by precedent are, e.g., In re Swan Wood,
In view of the close structural similarity between the claimed compounds and [the prior art compound], and the fact that the latter is disclosed as possessing antimicrobial activity, we believe that one skilled in the art would have been, prima facie, motivated to make the claimed*713 compounds in the expectation that they, too, would possess antimicrobial activity.
In In re Payne,
The similarity in structure and properties between the prior art and claimed compounds is sufficiently close to support a prima facie case of obviousness.
Id. at 314,
An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound in the expectation that compounds similar in structure will have similar properties.
Id. at 313,
In In re Grunwell,
Similar reasoning was applied to process claims in In re Clemens,
Since the PTO had not made out a prima facie case of obviousness respecting claim 8, evidence of comparative testing was unnecessary in rebuttal.
Id. at 1036,
Again in In re Zeidler,
One of ordinary skill would have had reason to expect, given the close structural similarity of the [reference] compounds and the teachings of [another reference], that use of a sulfonamide bridge ... would have resulted in dyes possessing the same or only slightly different properties from prior art dyes.
Id. at 966,
The Federal Circuit did not stray from this precedent.
When chemical compounds have “very close” structural similarities and similar utilities, without more a prima facie case may be made.
The rule also continued to be applied to process (use) claims, as illustrated in In re Merck & Co.,
In In re Geiger,
Because we reverse on the basis of failure to establish a prima facie case of obviousness, we need not reach the issue of the sufficiency of the showing of unexpected results.
Id. at 688,
In In re Chupp,
In Chupp the court disposed of the Commissioner’s policy argument that grant of the composition claims would prevent the public from using Chupp’s structurally obvious compound for the herbicidal uses shown in the prior art, with the remark that “the expectation that persons would want to use the compound to produce inferior results (or would want to fight lawsuits over such uses) is false.” Id. at 647,
The Federal Circuit has not applied the standard of prima facie obviousness that the majority today “reaffirms”, but has consistently considered properties and use as well as structure. The only decision referred to by the majority is In re Wright,
The determination of whether a novel structure is or is not “obvious” requires cognizance of the properties of that structure and the problem which it solves, viewed in light of the teachings of the prior art.
Id. at 1219,
The Court stated in Thomas v. Washington Gas Light Co.,
When rights have been created or modified in reliance on established rules of law, the arguments against their change have special force.
At least, the majority should explain its reasoning for so far-reaching a change of law and practice, affecting patentability of mechanical devices as well as chemical compounds and compositions.
D
The Statute
The court’s in banc holding that similarity of chemical (and mechanical) structure suffices for prima facie unpatentability under 35 U.S.C. § 103, even when the applicant’s newly discovered properties and use are not suggested in the prior art, departs from the precepts of not only section 103, but also sections 101 and 102. The court today imposes the same rebuttal burden on the applicant regardless of whether the prior art suggests the applicant’s newly discovered properties.
35 U.S.C. § 103 requires that obviousness be determined in light of the prior art; section 102 fixes the limits of prior art; and section 101 requires utility as a condition of patentability. Giving consideration to the newly discovered properties and utility as well as the structure of a new chemical compound or composition (or a new device) implements the requirement of section 103 that the invention be viewed as a whole. Jones v. Hardy,
The factual determination of the scope and content of the prior art, see Graham,
To rely on an equivalence known only to the applicant to establish obviousness is to assume that his disclosure is a part of the prior art. The mere statement of this proposition reveals its fallaciousness.
In re Ruff,
35 U.S.C. § 101 requires that an invention be useful. The use of a chemical is the utilitarian property of that chemical. Since the essence of the prima facie case is that the holding of unpatentability is legally complete, the property and utility can not be ignored. Consideration of the utility of the claimed invention is as integral to the examiner’s determination of prima facie unpatentability as it is to the decision after any rebuttal evidence is submitted.
The decisions I have discussed, and many others, illustrate the breadth of the court’s exposure and the depth of the court's understanding, evolved over more than thirty years of application of these statutory principles. The weight of precedent, well exceeding the sampling I have reported, contradicts the majority’s holding, and has established powerful legal principles that should not be discarded without sound
stare decisis [is] the means by which we ensure that the law will not merely change erratically, but will develop in a principled and intelligible fashion. That doctrine permits society to presume that bedrock principles are founded in the law rather than in the proclivities of individuals....
The law of prima facie obviousness had developed over a long history, knitting the common threads of many carefully considered cases, leading to unifying criteria, in the tradition of the common law.
The court has made the wrong choice in reviving the Hass-Henze presumption of obviousness based on chemical structure without consideration of the obviousness of the applicant’s new properties. This presumption was criticized, limited, and overruled, and has been superseded by judicial appreciation that a chemical “is, realistically and legally, a composite of both structure and properties”, in the words of Pa-pesch. I repeat the unifying criterion that for a new chemical compound or composition a prima facie case of obviousness is made when both (1) the new compound or composition is of closely related chemical structure to the prior art compound or composition, and (2) there is some suggestion or motivation arising in the prior art to make the new compound or composition in order to achieve the inventor’s desired properties and utility. When these requirements were met, appropriate evidentiary showings could rebut the prima facie case. Only an occasional exception among past decisions eliminated the second part of this unifying criterion, and required proof of actual differences in properties when there was no suggestion in the prior art of the properties discovered by the inventor. Today the aberration becomes the law, reversing over thirty years of reasoned legal analysis.
The court does not state what new statutory interpretation is invoked, what new policy or principle is served, by rejecting the reasoning of so many decisions. The Supreme Court has remarked that
any detours from the straight path of stare decisis in our past have occurred for articulable reasons, and only when the Court has felt obliged “to bring its opinions into agreement with experience and with facts newly ascertained.”
Vasquez,
II
DILLON’S INVENTION
Dillon’s patent application discloses and claims her discovery that the inclusion of certain tetra-orthoester compounds in hydrocarbon fuel compositions will reduce the emission of solid particulates (i.e. soot) during combustion of the fuel. The tetraor-thoesters are a known class of chemical compound. It is undisputed that their combination with hydrocarbon fuels, for any purpose, is not described in the prior art; nor is their use to reduce particulate emissions from combustion of hydrocarbon fuels.
A
Dillon’s Appeal to the Board
An applicant is required to appeal from all of the examiner’s rejections that the applicant wishes to contest. 37 C.P.R. § 1.191(c). Dillon did so, and appealed the rejection of claims 2-14, 16-22, and 24-37. Of these, claims 24-35 were process (use) claims and the others were composition claims. The appealed rejections were directed to the process and composition claims together, and were described by the board as follows:
1. Claims 24 through 37 under 35 U.S.C. 112, second paragraph.
2. Claims 2 through 14, 22 and 34 through 37 under 35 U.S.C. 103 as unpat-entable over Sweeney '417 in view of Elliott, Howk, Kesslin, Speh, and Neves.
*717 3. Claims 16 through 22, 24 through 33, 35, 36 and 37 under 35 U.S.C. 103 as unpatentable over Sweeney ’267 or ’417 in view of Elliott, Howk, Kesslin and Speh.
Board op. at 2. In its decision the board wrote that composition and method of use claims were at issue:
The appealed subject matter relates to compositions comprising a hydrocarbon fuel and a particulate emissions suppressing amount of an organic orthoes-ter, and a method of reducing particulate emissions by combusting such compositions.
Board op. at 1.
Dillon duly argued each ground of rejection, in accordance with 37 C.F.R. § 1.192, and the examiner responded. The board reversed the examiner’s rejection on section 112, for all the claims rejected on that ground, and affirmed the rejections on section 103, for all the claims rejected on that ground. Each ground encompassed composition and process claims, without distinction. (The board also discussed claims 13, 14, 34, 36, and 37, as to aspects not here material.)
Analyzing all the claims with respect to section 103, the board did not distinguish among them. For example, the board stated that
differences between appellant’s and the prior art’s motivation for adding a component to a composition will not alone render the claimed composition, or process unobvious.
Board op. at 7 (emphasis added). The board further stated, again as to all the claims, that
The mere recitation of a newly discovered function ' inherently possessed by things and processes in the prior art does not cause claims drawn thereto to distinguish over that prior art.
Board op. at 8 (emphasis added). Throughout its opinion the board did not imply that its analysis was directed solely to the composition claims. Indeed, the board stated that
the use of the orthoesters recited in the appealed claims (wherein R is —OR) as hydrocarbon fuel additives would clearly have been prima facie obvious from the teachings of the Sweeney patents alone and the close chemical and structural relationship between Sweeney’s and appellant’s orthoesters[.]
Board op. at 6 (emphasis added). The majority errs in its statement that the board “review[ed] only the composition claims”. The board considered and rejected all the claims, drawing no distinction as to the style of the claim.
The rejection of all of the claims was appealed to us. The Commissioner has not argued otherwise, and both sides briefed and argued all the claims. As stated in the Commissioner’s brief, the issue on appeal is whether “The claimed subject matter would have been prima facie obvious from the combined teachings of the references.” Thus I must dissent from the court’s af-firmance of the board’s rejection of the process claims simply because Dillon did not argue that the process claims are patentable even if the composition claims are not.
B
In re Durden
Before this court, Dillon properly did not discuss points that had not been raised by the examiner or the board. Since there had been no reliance on the law of In re Durden,
The Commissioner, in his answering brief before the Federal Circuit, argued for the first time that Durden provided additional authority for upholding the board’s rejection of the process claims. The Commissioner stated that if the court decided to
However, the majority of this court, having affirmed the rejection of all the claims, has no basis for review on additional authority. Thus I can not join the majority’s opinion interpreting Durden, for it is, in the event, dictum.
C
The Merits
Applying the guidance of precedent to Dillon’s invention: the compositions are new,
The Sweeney references show the water-sequestration property of tri-orthoesters in hydrocarbon fuels, and the Elliott reference shows the water-sequestration property of tri- and tetra-orthoesters in hydraulic fluids (which are not hydrocarbons and not fuels). There is no suggestion in the prior art that would have led one of ordinary skill to make Dillon’s new compositions in the expectation that they would reduce particulate emissions from combustion. No reference suggests any relationship between the properties of water-sequestration and soot-reduction. All this is undisputed.
Dillon raises the question of whether the Sweeney and Elliott references
The board stated that it is inherent in Dillon’s compositions that they would reduce particulate emissions, that Dillon “merely recited a newly discovered function inherently possessed” by the prior art. Arguments based on “inherent” properties can not stand when there is no supporting teaching in the prior art. Inherency and obviousness are .distinct concepts. In re Spormann,
[T]he inherency of an advantage and its obviousness are entirely different questions. That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.
When the PTO asserts that there is an explicit or implicit teaching or suggestion in the prior art, the PTO must produce supporting references. In re Yates,
The applicant’s newly discovered properties must be considered in determining whether a prima facie case of unpatenta-bility is made, along with all the other evidence. Neither structure nor properties can be ignored; they are essential to consideration of the invention as a whole. But Dillon’s own discovery of the soot-reducing
The board cited In re Merck,
In view of the complete absence of any suggestion in the prior art that Dillon’s new compositions would have her newly discovered and unobvious property and use of soot reduction, I would reverse the rejection of the composition and the use claims.
The Commissioner raised the policy argument that Dillon is simply removing from the public an obvious variant of Sweeney’s and Elliott’s compositions, one that might be useful to scavenge water in fuels. In Ruschig the court had considered the argument, and remarked that the provision of adequate patent protection for the applicant’s new compounds, not previously in existence and having a new and unobvious use, was favored over the “mere possibility that someone might wish to use some of them for some such [other] purpose”.
Although there is a vast amount of knowledge about general relationships in the chemical arts, chemistry is still largely empirical, and there is often great difficulty in predicting precisely how a given compound will behave.
In re Carleton,
Granting Dillon a patent on her invention takes away nothing that the public already has; and the public receives not only the knowledge of Dillon’s discovery, for abandoned patent applications are maintained in secrecy, but Dillon is not deprived of an incentive to discover and to commercialize this new product for this new use.
Conclusion
Following the weight of precedent, I would hold that a prima facie case of obviousness of a new chemical compound or composition requires consideration of not only the chemical structure but. also the newly discovered properties, in light of the teachings and suggestions of the prior art. I would expressly reject the Commissioner’s position that determination of the pri-ma facie case is made regardless of the properties disclosed in the inventor’s application.
Since there is no suggestion in the prior art references, alone or in combination, of the particulate-reducing property and use discovered by Dillon for her new compositions, a prima facie case of obviousness has not been made. Thus it is not necessary to patentability that Dillon establish
. The court allows one exception, as I shall discuss.
. The majority holds that a prima facie case of obviousness is made whenever the structure of the applicant's new compound or composition*700 tor mechanical device) is "obvious" from that shown in the prior art, independent of whether the prior art suggests or makes obvious the applicant’s newly discovered property and use. The majority allows an exception for situations where the prior art gives no "reason or motivation to make the claimed invention”, and duly makes clear that this means motivation to make the new compound or composition for the prior art use, not for the applicant’s newly discovered use. This exception comes into play only when the prior art structure has no known utility; and a few such situations are reported, e.g. In re Stemniski,444 F.2d 581 , 58 CCPA 1410,170 USPQ 343 (CCPA 1971) (prior art compounds used only as intermediates), and In re Albrecht,514 F.2d 1389 ,185 USPQ 585 (CCPA 1975) (no practical utility). Thus, according to the majority, when the prior art chemical compound or composition has no known use, the prior art provides no "reason or motivation” to make a structurally similar new compound or composition; and in such case the prior art would not make a prima facie case of obviousness based on structural similarity alone.
While I welcome any reduction in the sweep of the court’s holding, this exception is of trivial impact. In most cases tlqe prior art compound or composition has some known use; and thus for most cases the majority’s "motivation” test would be met based solely on similarity of structure. This is an important change of law. While the holdings of the prior law were not entirely consistent — see the various CCPA opinions discussed post — this in banc court now establishes the rule that will control all cases in the future.
. It is the role of the in banc court to resolve “a precedent-setting question of exceptional importance”, Fed.Cir.R. 35(a), and not simply to second-guess the panel on the facts of a particular case.
. 35 U.S.C. § 103. A patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. ...
. The majority's insistence that it is merely reinstating the status quo ante can not be, of course, for the in banc holding that the applicant’s newly discovered properties and use are not considered in determining prima facie obviousness under section 103 (unless the prior art structure itself has no known use), such that the applicant must now prove that the prior art structure does not possess the newly discovered property and use, forecloses reliance on contrary precedent.
. A homolog is a chemical compound that differs from another compound only by one or more methylene groups. An "adjacent” homo-log differs by precisely one methylene group. Henze,
. As used in these decisions “property" and "utility” refer to the utilitarian property that complies with 35 U.S.C. § 101, and not to physical or chemical parameters not pertinent to patent-ability. In re Krazinski,
. Dillon’s tetra-orthoester is not a homolog of the tri-orthoester. Nor is it an isomer. The majority opinion simply describes the tri-or-thoester and tetra-orthoester structures as having "a sufficiently close relationship", without the precision of past decisions.
. In Dillon's case such disclosure was absent. It is undisputed that Dillon's property of soot-reduction during combustion was not disclosed for the prior art compositions.
. In Ruschig the court discussed the Commissioner’s position that claims to compounds that are structurally similar to known compounds should "define” the newly discovered property on which patentability was based. The CCPA rejected such limitation, stating that "[vjaluable inventions should be given protection of value in the real world of business and the courts”.
The majority of the court today, remarking that "the composition claims are not limited to [Dillon’s] new use”, hints that the result might be different if they were. Ruschig and other cases consistently rejected the proposition that claims to new compounds and compositions must contain a limitation to a specific use. Any change in this long-established practice requires careful thought. The majority also holds that Dillon’s claim recitation of "a sufficient amount of [orthoester] to reduce the particulate emissions” is ineffective as a use limitation, adding uncertainty to claim draftsmanship.
. In 1980 the Supreme Court noted that over 4,848,000 compounds had been listed by the Chemical Abstracts Service. Dawson Chemical Co. v. Rohm & Haas Co.,
. The facts in Mod are indeed on all fours with the facts now before us. In Mod the court held that the apparently shared property of insecticidal activity sufficed to make Mod’s new (but structurally similar) compounds unpatentable for obviousness, despite Mod’s discovery that his new compounds had the new property of antimicrobial activity. In Dillon’s case the court holds that the presumptively shared property of water sequestration suffices to make Dillon’s new (but structurally similar) compositions unpatentable for obviousness, despite Dil-Ion’s discovery that her new compositions have the new property of soot reduction. In neither case did the prior art suggest or make obvious the applicant’s newly discovered property. The absence of the term “prima facie case” from the Mod opinion does not distinguish it from the majority’s holding today. A conclusion of obviousness must be legally sufficient under the statute, and for both Mod and Dillon the courts hold that on similar facts this conclusion is compelled as a matter of law.
. There is extensive precedent relating to chemical compositions as well as chemical compounds; see the sampling herein. The statement by the majority that its in banc holding does not "necessarily” apply to “all cases” of chemical compositions will not add clarity and stability to the law. The court's holding today must be followed by patent examiners and patent applicants, and while I dissent from it, it is essential that inventors and examiners, producing and processing 150,000 new patent applications annually, know the law and practice that will control patentability.
. As pointed out at n. 2, supra, the facts illustrated in Stemniski, where the prior art compounds assertedly had no known use, are the only circumstance wherein the majority allows that structural similarities alone do not make a prima facie case of obviousness under section 103. While a chemical compound may be of solely theoretical interest, it is hard to imagine a composition (or a mechanical device) with no known use; thus this exception has scant practical significance with respect to compositions and mechanical devices.
. A new use is claimed as a process, in accordance with 35 U.S.C. § 100(b):
The term "process" means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
. Although the majority states that it is "not retreating from the recent trend of case law”, the cases over the past thirteen years (since Shetty) do not support this view. The courts have generally required that there be a suggestion in the prior art that would have made obvious not only the chemical structure but also the newly discovered property of a new chemical compound or composition, in order to make a prima facie case under section 103.
. Wright claimed a new carpenter’s level, having the new property and use of enhanced pitch measurement. Wright’s new structure was a combination of elements that were in the prior art, but there was no suggestion in the prior art that this new combination might have the property and use discovered by Wright. The panel explained that it was unobvious to make this combination to solve the problem of increasing pitch measurement: a rationale appearing in dozens of decisions. See, e.g., Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co.,
Many other decisions apply similar reasoning, contrary to the majority’s holding today.
. The process claims were written in the style required by 35 U.S.C. § 100(b), see n. 15, supra. As explained in In re Moreton,
. If a compound or composition is known, for any use or no use, it is not patentable. 35 U.S.C. § 102; Titanium Metals Corp. v. Banner,
. The Board held that all the references other than Sweeney and Elliott were "merely cumulative”, and did not discuss the Howk reference, on which the majority apparently now relies.
. The majority remarks that Dillon made "no attempt to argue the relative importance” of soot reduction and water sequestration. This dramatic new criterion, although presented in the amicus brief of the American Intellectual Property Law Association, should not be approved by this in banc court without discussion.