Hedges, In re
| Decision Date | 12 February 1986 |
| Docket Number | No. 85-2524,85-2524 |
| Citation | 228 USPQ 685,783 F.2d 1038 |
| Parties | , 228 U.S.P.Q. 685 In re Charles V. HEDGES and Victor Mark. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Martin B. Barancik, Mount Vernon, Ind., argued for appellants. With him on the brief was John W. Schneller, Lyon & Lyon, Washington, D.C.
Henry W. Tarring, Associate Solicitor, Office of the Solicitor, of Arlington, Va., argued for appellee. With him on the brief, were Joseph F. Nakamura, Solicitor and Fred E. McKelvey, Deputy Solicitor.
Before MARKEY, Chief Judge, MILLER, Senior Circuit Judge, and NEWMAN, Circuit Judge.
The decision of the United States Patent and Trademark Office (PTO) Board of Appeals (Board), affirming the rejection of claims 8, 9, and 10 of United States patent application Serial No. 301,396 as unpatentable under 35 U.S.C. Sec. 103, is reversed.
OPINIONThis patent application of Charles V. Hedges and Victor Mark (collectively Hedges or applicant) is for a "Process for Preparing Aryl Sulfone Sulfonic Acids". Claim 8 is representative:
8. A process for sulfonating diphenyl sulfone which comprises contacting diphenyl sulfone in its molten state with a sulfonating agent consisting essentially of sulfur trioxide under substantially anhydrous conditions in the absence of a solvent.
Hedges' invention is the reaction of diphenyl sulfone, at a temperature above its melting point of 127?C, with liquid or gaseous sulfur trioxide in the absence of water or a solvent, thereby sulfonating the sulfone in high yields without forming by-product sulfuric acid.
The only rejection is under 35 U.S.C. Sec. 103, and the Board relied only on Felix U.S. Patent No. 2,010,754. Hedges has cited three additional references, parts of which were discussed by the Board: Mark U.S.Patent No. 3,948,851, British Patent No. 820,659, and certain pages of a book by Gilbert entitled "Sulfonation and Related Reactions". The PTO Solicitor on this appeal discusses and relies on all these references.
Felix shows the sulfonation of aryl sulfones with sulfur trioxide in the form of fuming sulphuric acid. Sulfonation is carried out at 5-10?C, after which the temperature rises exothermically to 30?C before it is lowered to room temperature. The Board held that this, without more, makes a prima facie case of obviousness.
Hedges has taken the position, before the Board and before us, that the low temperatures shown by Felix defeat any prima facie case of obviousness of the reaction at above 127?C. Hedges also argues that, viewing the references as a whole, it would not have been obvious to operate in the molten state at high temperatures. The Board held that Hedges had not produced "persuasive objective evidence" in rebuttal.
Only after the PTO has made a prima facie case of obviousness does the burden of coming forward shift to the applicant. In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). If a prima facie case is made in the first instance, and if the applicant comes forward with reasonable rebuttal, whether buttressed by experiment, prior art references, or argument, the entire merits of the matter are to be reweighed. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.Cir.1984).
In the case before us, we do not agree with the PTO that Felix alone supports a prima facie case of obviousness. Felix makes clear that low temperatures are the desired conditions for this reaction. However, the Solicitor has elaborated on and strengthened the PTO argument by drawing on the additional prior art cited by Hedges. Hedges takes vigorous exception to this procedure, arguing that he has been deprived of the opportunity to respond before the PTO to these "new grounds of rejection" and to produce evidence in rebuttal.
We and our predecessor court have not condoned the presentation of new grounds of rejection for the first time on appeal. In re Hounsfield, 699 F.2d 1320, 1324, 216 USPQ 1045, 1049 (Fed.Cir.1982); In re Zeidler, 682 F.2d 961, 967, 215 USPQ 490, 494 (CCPA 1982); In re Nygard, 341 F.2d 924, 928-9, 144 USPQ 586, 590 (CCPA 1965). In Hedges' case the Solicitor referred to new portions of the references cited by Hedges during examination for further support of the same rejection that had been upheld by the Board. Hedges had relied on these references before the Board, as he does before us, for his argument that viewed as a whole the body of prior art teaches away from conducting this reaction at high temperatures. The Solicitor should not be constrained from pointing to other portions of these same references in contravention of Hedges' position. In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965) (). On these facts, we do not discern that the Solicitor has violated the rule against presenting new issues on appeal. The Solicitor has done no more than search the references of record for disclosures pertinent to the same arguments for which Hedges cited the references.
The PTO argues that Felix shows no upper limit to the temperature of the reaction, and that determining the optimum temperature is a matter of "routine experimentation". The plain reading of Felix is contrary to the PTO position. As was said in In re Rosenberger, 386 F.2d 1015, 1018, 156 USPQ 24, 26 (CCPA 1967), "[t]his appears to be an extremely strained interpretation of the reference which could be made only by hindsight."
To overcome this deficiency in Felix the Solicitor directs attention to the British patent, which discusses the reaction of liquid phenols with liquid sulfur trioxide in the absence of a solvent. The PTO points to the teachings of reaction at elevated temperature:
The invention is applicable to liquid and solid phenols ... having melting points up to 115?C ... and to mixtures of phenols whose individual melting point is higher than 115?C but which give in admixture a melting point of 115?C or lower.
For mono-sulphonic acids ... the temperature is kept above the melting point of the phenol used.
... the liquid sulphur trioxide is added ... at a temperature slightly above the melting point of the phenol in the case of solid phenols, and after the addition the reaction mass is heated at a higher temperature of 160-180?C....
The highest-melting phenol illustrated in the British patent is resorcinol, melting point 110?C, to which
liquid sulfur trioxide is added ... at a...
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