Application of Mageli

• Decision Date: 18 January 1973
• Docket Number: Patent Appeal No. 8799.
• Citation: 176 USPQ 305,470 F.2d 1380
• Parties: Application of Orville Leonard MAGELI et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

176 USPQ 305, 470 F.2d 1380 (1972)

Application of Orville Leonard MAGELI et al.

Patent Appeal No. 8799.

United States Court of Customs and Patent Appeals.

January 18, 1973.

Alan L. Potter, Washington, D. C., Earl L. Tyner, Arlington, Va., Plumley & Tyner, Arlington, Va., attorneys of record, for appellants.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Jack E. Armore, 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, adhered to on reconsideration, affirming the examiner's rejection of the sole claim in appellants' application, serial No. 536,618, filed March 23, 1966, for obviousness under 35 U.S.C. § 103. We affirm.

The Subject Matter Claimed

The claim on appeal is for the compound "Di-secondary-butylperoxydicarbonate," which we shall refer to as SBP. The application teaches that this ester is useful as an initiator of polymerization reactions of olefinically unsaturated monomers such as styrene, vinyl chloride, and ethylene. It further teaches that SBP is allegedly less susceptible to spontaneous decomposition and is less shock sensitive than prior art lower alkyl peroxydicarbonate esters useful for the same purpose.

The References

The references are:

                Strain                 2,370,588           Feb. 27, 1945
                Friedlander            2,728,756           Dec. 27, 1955
                Strain et al.,        Journal American Chemical Society
                                      ----------------------------------
                                      Vol. 72 (1950), pages 1254-1263
                

There is essentially no dispute about the teachings of the references. Appellants succinctly sum up the prior art as follows:

The cited references disclose three isomers and an adjacent homologue of the claimed compound, and disclose that these compounds have utility as polymerization initiators. The particular isomers disclosed are N-butyl peroxydicarbonate, isobutylperoxydicarbonate, and tertiary butylperoxydicarbonate, referred to as NBP, IBP and TBP respectively. The adjacent homologue disclosed is isopropyl peroxydicarbonate (IPP).

The Strain reference discusses methods of producing peroxydicarbonates, and discloses methyl ethyl carbinol * * * as a possible starting material. This compound, if reacted in the manner disclosed in the Strain reference, would result in the instantly claimed compound.

The Rejection

The examiner held and the board agreed that the claimed compound, SBP, would have been obvious to one of ordinary skill in the art in view of the close structural similarity of SBP to several prior art compounds, also known to be polymerization initiators, the board specifically referring to the teaching of Strain "indicating how the claimed compound may be made, and the disclosure of closely related specific isomeric compounds * * *."

Appellants filed two successive affidavits in an attempt to show unexpected superiority of SBP over the prior art isomers and homologue (NBP, IBP, TBP, and IPP) as polymerization initiators, with greater solubility in hydrocarbon solvents, greater safety in handling due to greater stability at room temperature, and less shock sensitivity. The second affidavit also included evidence of alleged commercial success of appellants' compound under the trade name "Lupersol."

The examiner was not impressed with appellants' evidence because, as he said,

* * * it is noted that the instant compound is superior to some of its isomers in some respects, and inferior to some of its isomers in other respects. Further, data on only a few of a large number of possible tests are presented, e. g. the efficiency of the various peroxides with respect to dozens of other polymerizations could be determined. Moreover, variations in the characteristics of the isomers are reasonably to be expected in view of the teachings of Strain et al that differences in stability are dependent upon choice of alkyl groups * * *. Thus one skilled in the art would expect variations in properties among the various butyl isomers because of their structural differences.

The board adopted the above examiner's reasons and, in addition, stated, with respect to the differences in properties of the different isomers, that:

Appellants point out that there are differences in the properties of the different isomers. Such differences would be expected by those skilled in the art and while they may not be precisely predictable, nevertheless, the close relationship to the isomers in the art cited and the clear teaching by Strain of how to make the claimed isomer, in our opinion, renders the claimed isomer obvious under 35 U.S.C. § 103.

In addition, the board said it had considered the commercial success evidence and stated that "we do not consider the affidavit persuasive of patentability. Commercial success is of no moment unless patentability is in doubt, National Machine Products Co. v. Ladd, 231 F.2d sic. Supp. 535, 142 USPQ 254 (D.C.D.C.1964)."

OPINION

We agree with the Patent Office Solicitor that the claimed compound is prima facie obvious from the teachings of the prior art as a whole and there is no need to discuss this point since appellants do not contest it. Their case is that prima facie obviousness has been overcome. As they state in their brief,

In so far as the Board bases its finding of obviousness upon the prior art showings of certain isomers and a homologue, it is submitted that the clear-cut showing of unexpected and superior properties of the claimed compound put this application squarely within the doctrine of In re Papesch, 50 CCPA 1084 315 F.2d 381, 137 USPQ 43 1963.

As the solicitor's brief accurately points out,

The appellants rely for patentability on evidence allegedly showing (1) "unexpected and superior properties", (2) that "the instant invention filled a long sought need", and (3) "almost instantaneous commercial success" although the applicable prior art "had been available for 15 to 20 years" * * *.

The balance of the solicitor's brief is devoted to answering those points, we think successfully.

We shall consider point (3), the commercial success argument. At the outset, we correct the board's reference to the opinion in the National Machine Products case. Judge Jackson's opinion therein did not say commercial success is of "no moment unless patentability is in doubt," the proposition for which it was cited. Judge Jackson actually said (our emphasis):

Since the Court does not find the issue of obviousness otherwise in doubt, this evidence can be accorded only slight probative weight. Union Metal Mfg. Co. v. Ooms, 81 U.S.App.D.C. 76, 154 F.2d 857 (1946).

It must be pointed out that Judge Jackson was writing nearly two years before Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), which provided new guidance in the matter of determining patentability under the 1952 Act. As illustrating how far we have come in our thinking on that matter in a quarter century we quote, on a res ipsa loquitur basis, the following from the Union Metal per curiam opinion which was cited by Judge Jackson, a pre-1952 Act case typical of the kaleidoscopic reasoning which was not uncommon before the 1952 Act sorted out the prerequisites to patentability (emphasis ours):

These claims were denied patentability * * * on the ground that they do not disclose invention over the prior art * * *. In our opinion, the novelty necessary to show inventime genius is lacking in these claims. * * the lower court\'s findings of fact * * clearly show that the device had been anticipated.

The appellants proved the utility of their product as a cargo boom, and its widespread acceptance by the shipping industry as a useful device. But a plain absence of invention is not overcome by evidence of usefulness and commercial success. Only where there is doubt as to invention or novelty is proof of practical utility and general commercial acceptance permitted to turn the decision in favor of patentability. * * * neither claim recites anything amounting to invention over the prior art. That being true, commercial success does not supply the lacking invention. 81 U.S.App.D.C. at 76-77, 154 F.2d at 857-858.

Suffice it to say that we have long since outgrown that kind of reasoning in the field of patent law and gone with it are doubts about the necessity of considering the evidence of relevant facts. Obviousness or unobviousness under § 103 being an ultimate legal conclusion to be determined on the basis of facts established by evidence, evidence bearing on the facts is never of "no moment," is always to be considered, and accorded whatever weight it may have. In re Palmer, 451 F.2d 1100, 59 CCPA ___ (1971), and cases cited therein.

Appellants argue that "The Board has * * * failed to recognize that the instant invention filled a long sought sic need, and met with almost...