Application of Aller

• Decision Date: 22 March 1955
• Docket Number: Patent Appeal No. 6079.
• Citation: 220 F.2d 454,105 USPQ 233
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of Basil Vivian ALLER, Richard Norman Lacey, Reginald Harold Hall.

105 USPQ 233, 220 F.2d 454 (1955)

Application of Basil Vivian ALLER, Richard Norman Lacey, Reginald Harold Hall.

Patent Appeal No. 6079.

United States Court of Customs and Patent Appeals.

March 22, 1955.

Clinton F. Miller, Wilmington, Del., for appellants.

E. L. Reynolds, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.

Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY and COLE, Judges.

COLE, Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, affirming the rejection by the Primary Examiner of appellants' application for a patent, Serial No. 45,326, filed August 20, 1948, for "Decomposition of Organic Peroxides." Of the original sixteen claims, claims 11-14 have been withdrawn, and no claims have been allowed, all having been denied as unpatentable over a reference specifically acknowledged in the application as prior art, as hereinafter discussed.

The rejection was made upon an article appearing in the Journal of the German Chemical Society in 1944, by Heinrich Hock and Shon Lang, entitled, "Autoxidation of hydrocarbons, Report no. 9: Concerning peroxides of benzene derivatives." The reference is cited as follows:

Hock et al. Ber. Deut. Chem. Ges., 77 B, pages 257 to 262, 1944.

The application is for a process for the production of phenol (carbolic acid), a chemical with wide uses as an antiseptic and preservative, and as an ingredient in the production of synthetic resins, explosives, drugs, photographic developers, and dyes. Ketones (particularly acetone) are produced as by-products of the process.

Basically, the process sought to be patented involves the treatment of isopropyl benzene hydroperoxide (or similar organic peroxides) with sulphuric acid, wherein the hydroperoxide is decomposed into phenol and acetone (or other ketones). So far as pertinent to this appeal, it is not necessary to inquire into the particular chemical reactions occurring in the process, nor is it necessary to discuss the method by which isopropyl benzene hydroperoxide is formed.

The process of appellants is identical with that of the prior art, except that appellants' claims specify lower temperatures and higher sulphuric acid concentrations than are shown in the reference. (Some of the claims also specify the use of solvents, but these are better discussed separately.) The main question involved in this appeal is whether the changes in temperature and in acid concentration amount to invention, or whether such changes would have been obvious to one skilled in the art.

Claim 8 was quoted by the Board of Appeals as illustrative, and reads as follows:

"8. Process for decomposing isopropyl benzene hydroperoxide and the production thereby of phenol and acetone which comprises bringing said peroxides into intimate contact with aqueous sulphuric acid of a concentration between 25 and 70% at temperatures between 40° and 80°."

The reference article shows essentially the same process as that recited in the claims, except that the only experiment discussed in the article was conducted at a temperature of 100°C. and with a 10% sulphuric acid solution.¹

The Primary Examiner held that the conditions of the claims resulted simply from experimentally varying the different factors of the process to determine the optimum reaction condition and was within the skill of the art; that there was no evidence to indicate that the reported increase in yields was a difference in kind and not of degree; that no actual commercial success had been shown; that even if commercial success had been shown, it would be insufficient of itself to show invention; and that quickened reaction times were not pertinent to show invention.

The Board of Appeals, in affirming the examiner, stated that experimentation to find the optimum conditions of temperature and acid concentration was "no more than the application of the expected skill of the chemical engineer * * *." The board stated that the record did not show any significant improvement in the efficiency of the process resulting from a difference in temperature, and that the essential question was whether an increase of concentration of acid which resulted in an increase in yield was a difference of degree only, or whether it was a "difference of such magnitude as to justify the allowance of the claims." The board held that the record failed to support a holding that there was patentable invention. An affidavit submitted by appellants after the examiner's rejection in an attempt to prove that the claimed process was "commercially attractive" while that of the reference was not, was accepted by the board only as further argumentation, and not as evidence.

Normally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification. Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 73 F.2d 931, 22 C.C.P.A., Patents, 830; In re Waite, 168 F.2d 104, 35 C.C.P.A., Patents, 1117. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson, 132 F.2d 1020, 30 C.C.P.A., Patents, 809; In re Scherl, 156 F.2d 72, 33 C.C. P.A., Patents, 1193. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 77 F.2d 627, 22 C.C.P.A., Patents, 1313; In re Normann, 150 F.2d 708, 32 C.C.P.A., Patents, 1248; In re Irmscher, 150 F.2d 705, 32 C.C.P.A., Patents, 1259. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Swain, 156 F.2d 239, 33 C.C.P.A., Patents, 1250; Minnesota Mining & Mfg. Co. v. Coe, 69 App.D.C. 217, 99 F.2d 986; Allen v. Coe, 77 U.S.App.D. C. 324, 135 F.2d 11.

Bearing in mind the foregoing, we examine the arguments of appellants to determine whether they have demonstrated patentability over the experiment of Hock and Lang.

Appellants specify three improved results from the conditions of the process sought to be patented: increased yields of phenol; increased yields of acetone; and shortened reaction times. These results, it is claimed, combine to make appellants' process commercially attractive while that of the reference would be commercially unattractive.

The yield of phenol reported by the reference article was 75% of theoretical, whereas the examples of appellants' specification show phenol yields of 83.7 to 100%. The reference did not state what acetone yield Hock and Lang obtained, although it did indicate that acetone was produced. Appellants' specification states that in following the conditions of the reference they obtained an acetone yield of about 60%. By their own method, appellants report acetone yields of from 71 to 88%, the yield, however, not being reported for two examples. The Hock and Lang reference experiment was completed in an hour and a half. Appellants' examples show comparable reaction times ranging from a total time of 20 minutes to three hours.

In analyzing these improved results, one is not struck by any difference in kind attributable to appellants' process — logically the improvements could flow equally well from changes in degree resulting from routine variation in temperature or acid concentration. At the least efficient conditions reported by appellants, the improvement is...