Application of Kuehl

• Citation: 475 F.2d 658,177 USPQ 250
• Decision Date: 22 March 1973
• Docket Number: Patent Appeal No. 8815.
• Parties: Application of Guenter H. KUEHL.
• Court: United States Court of Customs and Patent Appeals

177 USPQ 250, 475 F.2d 658 (1973)

Application of Guenter H. KUEHL.

Patent Appeal No. 8815.

United States Court of Customs and Patent Appeals.

March 22, 1973.

James F. Woods, New York City, attorney of record for appellant. Oswald G. Hayes, Raymond W. Barclay, New York City, John F. Witherspoon, Arlington, Va. (Stevens, Davis, Miller & Mosher), Arlington, Va., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Joseph F. Nakamura, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection for obviousness under 35 U.S.C. § 103 of claims 11, 12, and 13 in appellant's application serial No. 651,108, filed July 5, 1967, entitled "Crystalline Aluminosilicate and Method of Preparing the Same."¹ We reverse.

The Invention

Appellant describes his contribution to the "Useful Arts."² as a single invention or discovery having three aspects:

(1) Appellant has discovered and synthesized a novel zeolite identified by the symbol ZK-22 and described more fully by the following allowed claims of appellant's application:

1. A solid crystalline aluminosilicate having the composition, in its dehydrated form, expressed in terms of approximate mol ratios of oxides as follows:

                1.0 ± 0.2 (1-x) CH3)4 N2O:xM2/n 0:A12 O3:YSiO2:ZP2O5
                

wherein M is selected from metal cations and positive ions and n is the valence thereof, Y is between about 2 and 7 and Z is between about 0.01 and Y + 2, said crystalline aluminosilicate ------ 48 being capable of selectively sorbing straight chain hydrocarbons if the number of thermally stable cations per unit cell is 10 or less from admixture of the same with non-straight chain hydrocarbons.

6. A solid crystalline aluminosilicate according to claim 1, wherein the tetramethylammonium ion is substantially replaced by hydrogen.

Claims 1-4, 6, and 7 directed specifically to the zeolite composition stand allowed.

(2) The second aspect of appellant's invention is the method for making ZK-22, and the Patent Office has also allowed claims in this application directed thereto.

(3) What appellant describes as the third aspect of his discovery is the subject matter of this appeal: claims 11, 12, and 13, directed to a hydrocarbon conversion process which involves the use of appellant's novel zeolite as a catalyst to crack hydrocarbons. Appealed claim 11 reads:

11. A hydrocarbon conversion process which comprises contacting a hydrocarbon charge under catalytic cracking conditions with the composition of claim 6.

Claims 12 and 13 also call for cracking of hydrocarbons with the new zeolite catalyst material, differing only in the specific form of the zeolite catalyst employed. Instead of cracking being performed with the catalyst in a hydrogen form pursuant to claim 11, cracking according to claims 12 and 13 is performed with the catalyst in the rare earth metal form. Claims 12 and 13 are also both dependent upon allowed claims to the zeolite composition in this application. Appellant concedes that claims 12 and 13 stand or fall with our disposition of claim 11.

The Rejection and the Issues

The sole rejection of the appealed claims is for obviousness under 35 U.S.C. § 103 in view of a single reference, Frilette patent N. 3,033,778, issued May 8, 1962, which discloses the cracking of hydrocarbons using crystalline aluminosilicate zeolite catalysts which are similar to but patentably different from ZK-22 zeolite. Appellant admits that his zeolite is "useful in the cracking of hydrocarbons employing generally the same temperatures, liquid hourly space velocity and ratio of catalyst to hydrocarbon charge" taught by Frilette.

The examiner rejected the appealed claims "as the obvious use of the catalyst for the conversion of hydrocarbons." In his Answer, the examiner further stated that "Applicant has not shown by comparative results with such crystalline alumino silicate that he obtains unexpected results and it is in the? view of the Examiner that in the absence of such a showing applicant is not entitled to the use claims for the cracking of hydrocarbons." (Emphasis ours.)

The board noted that the examiner's rejection of the claims as being directed to the obvious use of the claimed aluminosilicate was "necessarily under 35 U.S.C. § 103" and agreed with the examiner that to be unobvious there would have to be a showing by appellant that the use of his admittedly novel catalyst in the hydrocarbon cracking process of Frilette gave unexpected results. The board found there was "no evidence that anything other than the usual results will be obtained when the claimed zeolites are used to crack hydrocarbons" and therefore held the appealed process claims obvious under § 103.

Appellant's position is that the process is unobvious, that the contention that appellant must show unexpected results "is based upon the premise that the use claims need be patentable over the composition claims," and that the board's approach necessarily treats appellant's own disclosure as "prior art" under 35 U.S.C. § 103, which it is not. Appellant contends further that he is entitled to claims directed to the process of using his ZK-22 zeolite, because the Patent Office found that zeolite to be new and unobvious, the hydrocarbon conversion process claims being just another method of expressing, with reasonable latitude, what appellant regards as his invention. Appellant's position here is that the claims to the process of using the new and unobvious catalyst are necessarily directed to unobvious subject matter under 35 U.S.C. § 103 and therefore allowable. Appellant's brief states:

Where, as here, the crystalline aluminosilicate is itself unobvious, its use in catalysis is likewise unobvious. The Board of Appeals has not in this case asserted obviousness of the catalyst recited in the claims, although this constitutes the sole novelty of the claimed process. Allowance by the Patent Office of all claims in this application to the crystalline aluminosilicate as a new composition of matter is tantamount to a finding that the catalyst is unobvious.

The solicitor supports the view that the process invention is obvious in view of the teachings of Frilette since appellant has shown no unexpected result with the use of ZK-22 to crack hydrocarbons. He reasons as follows:

Appellant\'s allowed claims 6 and 7 specify a shape-selective zeolite catalyst. His specification describes a zeolite having a three-dimensional network structure and states that it has a crystal structure similar to zeolite A. The A zeolites are pointed out by Frilette as members of the class of zeolites which, by virtue of their crystalline structure, are useful as catalysts for cracking hydrocarbons. In the light of what is disclosed by Frilette, appellant\'s zeolite obviously is analogous to the known zeolites of that class. One skilled in the art therefore would expect it to have the same catalytic effect that the known zeolites have.

Further, as pointed out by the Board * * * there is no evidence of any unobvious result obtained by using the zeolites of the allowed claims in the claimed process.

With respect to appellant's argument that the board's decision, in treating the process claims, necessarily considers appellant's composition as though it were old and thus prior art under 35 U.S.C. § 103, the solicitor focuses upon the language of 35 U.S.C. § 103³ which speaks of "the invention as a whole." He states that "Here, the `invention as a whole' is a process. All of the evidence bearing on the obviousness of the process under section 103 must be considered." (Emphasis supplied.) The solicitor argues that the patentability of each statutory class of invention must be independently considered on its own merits in applying the test of § 103.

The solicitor continues with an explanation of the way he believes the obviousness of the appealed claims must be determined in view of several decisions of this court:

Whether or not the composition of matter used as the catalyst in the claimed process is new or old is not necessarily controlling. In re Saunders et al, 33 C.C.P.A. 1001, 154 F.2d 693 (1946). In Saunders, claims to a hormone pellet had been allowed in the appealed application, and this Court affirmed a rejection of claims to a method of administering the hormones by subcutaneous implantation. The Court pointed out that:

Obviously, this invention was complete when the pellet was made and, given such a pellet, it could not require invention to implant it in the old manner (Emphasis * * * by the solicitor).

A similar rationale in analogous circumstances has been sanctioned by this Court in decisions rendered after the passage of the 1952 Patent Act. See, e. g., In re Hoeksema, 51 C.C.P.A. 1474, 332 F.2d 374; In re Albertson, supra 332 F.2d 379, 51 C.C.P.A. 1377; In re Larsen, 49 C.C.P.A. 711, 292 F.2d 531. In Larsen this Court held a process to be obvious even though it produced an unobvious product. In Albertson, this Court, citing Larsen, held a process to be obvious even though both the final product and the starting material were unobvious.

Finally, the solicitor takes issue with appellant's contention that "appellant's process-of-use claims should be allowed because he is entitled to `reasonable latitude' in claiming what he regards as his invention." The solicitor states that the reasonableness of claiming latitude was properly determined by the board's finding that process of use claims are a "reasonable restatement of the invention if the process of use reflects an unexpected utility of the allowed composition."

OPINION

The arguments of both appellant and the solicitor make much of the facts that there are allowed claims in the application to the zeolite and that the appealed claims represent the method of using the zeolite, a different statutory class of...