Application of Russell

• Decision Date: 22 April 1971
• Docket Number: Patent Appeal No. 8478.
• Citation: 169 USPQ 426,439 F.2d 1228
• Parties: Application of Kenneth L. RUSSELL.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 426, 439 F.2d 1228 (1971)

Application of Kenneth L. RUSSELL.

Patent Appeal No. 8478.

United States Court of Customs and Patent Appeals.

April 22, 1971.

Samuel Stearman, attorney of record, for appellant; Eric Y. Munson, New York City, of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred W. Sherling, Washington, D. C., of counsel.

Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and RE, Judge, United States Customs Court, sitting by designation.

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims in appellant's application serial No. 531,756, filed March 4, 1966, for "Aqueous Compositions Containing Lanolin Oil." We reverse.

The specification describes the preparation of aqueous, lanolin-containing compositions, useful in shampoos and other detergent products. The compositions are clear, transparent solutions when initially produced, and do not require filtration to render them so, a factor of central importance to the issues in this appeal.

Claim 1 is typical of the claims on appeal:

1. A composition consisting essentially of:

(1) water

(2) a water-soluble substance selected from the group consisting of fatty acid soaps, synthetic detergents and mixtures thereof,

(3) a liquid fraction of lanolin,

(4) a non-ionic surfactant consisting essentially of a polyoxyethylene ether of lanolin alcohol condensed with 16 mols of ethylene oxide; and

(5) a higher fatty acid alkanolamide;

said surfactant being present in a ratio of from about 1:1 to about 3:1 relative to the amount of said liquid fraction of lanolin, and said alkanolamide being present in a ratio of from about ½:1 to about 7:1 relative to the amount of said liquid fraction of lanolin, whereby to effect synergistic solubilization of said liquid fraction of lanolin, said composition being clear and transparent as initially produced and without requiring filtration thereof.

The claims stand rejected under 35 U.S.C. § 103 as unpatentable over Wei¹ in view of Conrad² and Products Bulletin.³

Wei discloses water solubilization of lanolin by the addition of a higher fatty acid alkylolamide. The use of non-ionic surfactants, including polyoxyethylene compounds, in such compositions is disclosed. Wei teaches the use of the alkylolamide and lanolin in proportions of "at least 1:1," and states that a "preferred embodiment" contains these ingredients in proportions of from 2:1 to 100:1. However, the only compositions specifically described contained an alkylolamide and lanolin in a 10:1 ratio, which places those compositions outside the scope of appellant's claims.

Conrad discloses water solubilization of lanolin by the use of polyoxyethylene ethers of lanolin alcohols as surfactants. It is stated that when the ratio of surfactant is 3:1, "opalescent solutions were obtained only at certain concentrations," whereas clear solutions were obtained over a "complete range of concentrations" when ratios of 6:1 and 9:1 were employed.

Products Bulletin was cited only to show that the lanolin alcohols mentioned in Conrad are within the group of compounds taught by Wei as suitable surfactants.

The board affirmed the examiner's rejection of all the claims as obvious over Wei in view of the combination of Conrad and Products Bulletin.

The board also affirmed the examiner's rejection of the claims on the ground of res judicata, based on the dismissal of a civil action brought with regard to appellant's parent application in the District Court for the District of Columbia. The claims involved in that action were the same as those here, except that they lacked the recital that the compositions are initially clear without filtration. Neither side here appears to view this recital as a true limitation. It is appellant's contention that satisfying the other recitations will necessarily produce clear compositions. The added phrase is therefore in the nature of a "whereby" clause.

The District Court, upon stipulation of the parties and without hearing the case on the merits, dismissed the complaint "with prejudice as to" the claims in the parent case but "without prejudice as to any claims which the Patent Office may allow in the continuation application, Serial No. 531,756, filed March 4, 1966."

Appellant points out that two affidavits under Rule 132 have been presented in the instant case, neither of which was considered by the Patent Office in the parent case. The examiner and the board, in attempting to distinguish this case from In re Herr, 377 F.2d 610, 54 CCPA 1315 (1967), noted that in this case appellant could have presented the evidence earlier, in the proceedings on the parent application.

We do not think the atempted distinction is sound. In reversing the res judicata rejection in Herr, we noted that a new record presents a new issue. We also stated:

Theories and assumptions of what appellant might have done before appealing to this court the first time are not for us to pass on. Our concern is with what he actually has done in seeking to establish and protect his rights.

Id., 377 F.2d at 612, 54 CCPA at 1317-1318, fn. 6 (emphasis quoted). Here appellant has made a new record, presenting different questions of patentability even if the claims are viewed as identical to those in the prior case, as they were in Herr. As we pointed out in In re Craig, 411 F.2d 1333, 56 CCPA 1438 (1969), there is a public interest in granting valid patents which must be considered against the public interest upon which res judicata is based. For this reason, we reverse the board's decision on the res judicata rejection.

Turning to the obviousness issue, appellant contends that the prior art does not suggest the combining of two lanolin-solubilizing agents, viz., a polyoxyethylene ether of lanolin condensed with 16 mols of ethylene oxide and a higher fatty acid alkanolamide. We disagree. Ap...