APPLICATION OF GREENFIELD
| Decision Date | 16 March 1978 |
| Docket Number | Appeal No. 77-632. |
| Citation | 571 F.2d 1185 |
| Parties | Application of Stanley A. GREENFIELD and John A. DuPont. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Franklin D. Wolffe, Fidelman, Wolffe & Waldron, Washington, D. C., attorneys of record, for appellants.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Henry W. Tarring, II, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This is an appeal from the decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") sustaining the examiner's rejection of claims 6, 7, and 9 of application serial No. 389,745, filed August 20, 1973, for "Formaldehyde Stabilized Coating Compositions." We affirm.
The claimed subject matter is directed to a paint composition comprising an acrylic polymer in a water carrier containing a 3-isothiazolone as a mildewcide and formaldehyde as a stabilizer for the 3-isothiazolone, which composition has been neutralized to a pH of 6.0 to 9.2 with ammonia or an amine. The 3-isothiazolone prevents mildew growth in the dry paint film on the organic binder material of the coating; the formaldehyde stabilizes the 3-isothiazolone against degradation, which occurs under alkaline conditions in the latex form (in the paint can). The claims on appeal are:
The claims2 were rejected under 35 U.S.C. § 103 over either of two Lewis et al. patents, '1213 or '488,4 in combination with Walker.5 The Lewis patents disclose several 3-isothiazolones, including those of the appealed claims. Lewis '131 discloses the use of 3-isothiazolones in conjunction with other biocides; Lewis '488 discloses their use as mildewcides in acrylic, water-based paints. Walker discloses the use of formaldehyde as a biocide, particularly as a disinfectant which does not harm paint.
The board found that the Lewis patents and Walker show that both 3-isothiazolones and formaldehyde are known to be useful as biocides in coating compositions. It concluded that since the Lewis patents disclose that 3-isothiazolones "may be utilized as the sole biocidal agents or may be used in conjunction with other fungicides, insecticides, miticides and comparable pesticides," it would have been prima facie obvious to combine the 3-isothiazolones of the Lewis patents with formaldehyde. Furthermore, according to the board, the mere fact that appellants "observed" that formaldehyde stabilizes the 3-isothiazolones is not sufficient to negate the prima facie obviousness of combining two known biocides, since appellants have not established that chemical degradation was even a problem with respect to all 3-isothiazolones under the claimed conditions.
Upon reconsideration, the board reversed the rejection of claim 8, because there was ample evidence that the claimed 3-isothiazolone species (2-n -octyl-3-isothiazolone) has a degradation problem, but it adhered to its decision that the prima facie case had not been rebutted with respect to the other claims.
OPINIONIn this appeal, appellants have acknowledged that the appealed claims would have been prima facie obvious over the Lewis patents and Walker. Therefore, the sole issue for resolution is whether appellants have rebutted this prima facie case. See In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (Cust. & Pat.App.1976).
Appellants argue that the prima facie case is rebutted by a showing that, under the claimed pH conditions, 3-isothiazolones normally decompose, but that they do not do so when formaldehyde is added to the composition; that is, the presence of the formaldehyde in the paint compositions has the unexpected property of stabilizing the 3-isothiazolones. However, the validity of the argument depends on whether it has been demonstrated that the claimed 3-isothiazolones normally decompose under the claimed conditions.6
Appellants have submitted no objective evidence to demonstrate the existence of a degradation problem of 3-isothiazolones and rely solely on their specification. Six of the seven examples recite the stabilizing effects on 2-n -octyl-3-isothiazolone (the compound of allowed claim 8) of formaldehyde in various paint compositions;7 specific test results demonstrate the stabilizing effects.8 The only mention in the entire specification of any other 3-isothiazolone is in Example 6, which states that "formulations are prepared in which the isothiazolone of Formulation I is replaced by:" followed by a recitation of nine 3-isothiazolones. The example continues:
In the above formulations, when formaldehyde or a compound which releases formaldehyde under basic conditions is present in the formulation, the formulation is stabilized against decomposition of the isothiazolone. However, when formaldehyde or formaldehyde-releasing agent is absent, decomposition of the isothiazolone occurs on storage.
As is evident, there is no recitation of the conditions9 under which these "formulations" were tested,10 and there is no factual support for the general allegation that unexpected results were obtained. No specific test results regarding these "formulations" are disclosed. Accordingly, appellants have not rebutted the PTO's prima facie case. In re Hyson, 453 F.2d 764, 59 CCPA 782, 172 USPQ 399 (1972). Mere conclusory statements in the specification, unsupported by objective evidence, are entitled to little weight when the PTO questions the efficacy of those statements. In re Lindner, 457 F.2d 506, 59 CCPA 920, 173 USPQ 356 (1972),11 and cases cited therein.
Appellants argue that the burden is upon the PTO to present evidence that the claimed 3-isothiazolones do not decompose, analogizing the rejection to a finding of insufficient disclosure under section 112. If appellants had established that several of the species within claims 7 and 9 were subject to decomposition or if they had provided, with supporting evidence, some scientific basis to explain why all 3-isothiazolones would decompose under the claimed conditions, they would have a basis for arguing that the burden has been shifted back to the PTO. But in this section 103 rejection, the board has not challenged the adequacy of appellants' disclosure—only the adequacy of the proof submitted to rebut the PTO's prima facie case.
In summary, the specification discloses test results of the stabilizing effects of only one 3-isothiazolone (and generalized conclusions regarding a few other species)12 of a claimed subgenus which consists of several hundred compounds.13 Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for "it is the view of this court that objective evidence of...
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