Application of Wadlinger
| Decision Date | 23 May 1974 |
| Docket Number | Patent Appeal No. 8997. |
| Citation | 181 USPQ 826,496 F.2d 1200 |
| Parties | Application of Robert L. WADLINGER et al. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Richard K. Stevens, Arlington, Va., attorney of record, for appellants. O. G. Hayes and R. W. Barclay, New York City, of counsel.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Robert D. Edmonds, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.
This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 16, 17, and 19 of application serial No. 806,753, filed March 4, 1969, for reissue of patent No. 3,308,069, granted March 7, 1967, for "Catalytic Composition of a Crystalline Zeolite." We reverse.
The invention relates to synthetic zeolites, methods of making them, and hydrocarbon cracking conversion processes using them as catalysts. Appellants' application includes claims drawn to zeolite compositions represented by the following patent claim allowed in this reissue application:
The application refers to this composition as "zeolite beta" and so will we.
Appellants' original application for the patent they seek to reissue contained claims drawn to zeolite beta, methods of preparing the zeolite, and, as will later be explained in more detail, catalytic conversion of hydrocarbons utilizing the zeolite compositions. The claims to the zeolite and the methods of making it were allowed in the original application and are reallowed here, appearing as claims 1 through 14 in the reissue application. The issue here involves process claims to the use of zeolite beta as a catalyst for the cracking of hydrocarbons. Claim 19 reads:
19. In a process for conducting in the presence of a solid porous catalyst an isomerization, disproportionation, polymerization, or alkylation hydrocarbon conversion reaction characterized by a heat of reaction not less than zero, the improvement which comprises contacting charge hydrocarbons for said reaction at conversion conditions with a crystalline aluminosilicate catalyst at least partially in the hydrogen form resulting from treatment of the zeolite defined in claim 2 with a fluid medium containing ions selected from the class consisting of hydrogen ions and ammonium ions.
Claims 16 and 17 read:
The original application was aptly characterized by the board as containing, in addition to the composition and method-of-making claims, claims which are generic to all catalytic conversions with the novel zeolite, as well as claims directed to three specific types of conversion reactions: polymerization, alkylation, and isomerization. The method-of-use claims were rejected by the examiner in the original application "as the obvious use of the claimed crystalline zeolite," since "Plank et al. (II)1 discloses the claimed use of a similar crystalline zeolite as a catalyst for the conversion of hydrocarbons. In their second response appellants stated:
Applicants do not agree with the Examiners that the claims to the use of this novel catalyst are obvious in view of the prior art; however, in order to expedite issuance of this application but without setting a precedent on this point for future cases, applicants have cancelled claims 15-25 the method-of-use claims without prejudice in favor of the allowed claims.
The Basis for Reissue
Thus, appellants' argument is that, under the law which governed the prosecution of their original application, appellants understood that the patentability of their method-of-use claims was determined by whether appellants could show the existence of unexpected or superior results in the use of the composition; and appellants, being unable to show such superior results, cancelled the claims directed to the use of the zeolite in the original application. Appellants filed the reissue application, however, because of their knowledge of what appeared to them to be unique superior properties of zeolite beta as a catalyst for cracking hydrocarbons, properties which they refer to as "inherent characteristics" of zeolite beta.2
As noted by the board, the claims on appeal stand rejected on two grounds:
(1) The claims are improper reissue claims under 35 U.S.C. § 251 because appellants\' deliberate cancellation of claims similar in scope in the original case does not involve error within the meaning of the statute; and (2) The claimed process is unpatentable under 35 U.S.C. § 103 as being the obvious use of the claimed zeolite, with the Plank et al. patents being referred to in support of this rejection.OPINION
Taking the second issue first, the board agreed with the examiner that the method-of-use claims were "directed to an obvious use of the claimed aluminosilicate" in view of two patents to Plank et al.3 The position of the examiner was, first, that in view of the Plank patents "one of ordinary skill in this art would conclude that the crystalline aluminosilicate zeolites * * * would also be useful as catalysts for hydrocarbon conversion reactions," and, secondly, the affidavit submitted did not establish the existence of unexpected results in the use of the zeolite in all of the four reactions claimed. The board agreed with both rationales. Dealing with the test for determining the obviousness of the method-of-use claims, the board further expressed agreement with the examiner that the case was controlled by a Board of Appeals decision, Ex parte Kuehl, which, although unpublished, involved an application assigned to the same corporation as the application on appeal here. That decision of the board was reversed by this court last term. In re Kuehl, 475 F.2d 658 (Cust. & Pat.App.1973).
In Kuehl, where the facts were very similar to those here, we unanimously agreed that 35 U.S.C. § 103 requires that the obviousness of a method-of-use invention is not to be determined by asking, as the board did here, whether "one of ordinary skill in this art would conclude that the crystalline aluminosilicate zeolites described and claimed herein would also be useful as catalysts for hydrocarbon conversion reactions." Utilizing the very language of our opinion in Kuehl, we find the proper application of the statutory test of § 103, as enunciated by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), and the reasons why the examiner and the board erred here, to be as follows (emphasis added):
The issue here concerns primarily the meaning of the terms "prior art" and "subject matter as a whole" in § 103, and specifically whether appellant\'s zeolite composition is in any way to be considered as "prior art" for the purposes of applying the statute. Appellant says that the board\'s decision holding the claims to the method of using the zeolite obvious in view of * * * the Plank patents "necessarily utilizes as `prior art\' appellant\'s own disclosure" of the zeolite. To the extent that the board may have affirmed the examiner\'s view that the process claims represented "obvious use of the * * * catalyst for the conversion of hydrocarbons," this appears to be the case. The examiner\'s language does appear to treat incorrectly the * * * zeolite as part of the prior art. The correct application of the test of § 103 requires that the claims on appeal not be judged against any prior art other than * * * the Plank patents.
We hold that the claims directed to the use of zeolite beta as a catalyst for the four hydrocarbon conversion reactions recited therein are unobvious from the two Plank references. While the Plank references describe, as noted by the board, "a considerable variety of known aluminosilicate zeolites and disclose their utility for hydrocarbon conversion reactions," including those reactions recited in the appealed claims, the references nowhere disclose zeolite beta. And, as we said in Kuehl, "the process `invention as a whole' includes the use of the * * * zeolite and one having no knowledge thereof would not find it obvious to crack hydrocarbons using it as a catalyst." Judging the obviousness under § 103 of the method-of-use claims in similar fashion here, we conclude that they define an unobvious contribution to the art of converting hydrocarbons. See In re Schneider, 481 F.2d 1350, 1356 (Cust. & Pat.App.1973). Accordingly, the rejection under § 103 is reversed.
The second basis for the denial of claims to the methods of use of zeolite beta is that they are improper claims for...
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