Dillon, In re, 88-1245

• Citation: 919 F.2d 688,16 USPQ2d 1897
• Decision Date: 09 November 1990
• Docket Number: No. 88-1245,88-1245
• Parties: In re Diane M. DILLON.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 688

919 F.2d 688

16 U.S.P.Q.2d 1897

In re Diane M. DILLON.

No. 88-1245.

United States Court of Appeals Federal Circuit.

Nov. 9, 1990.

James H. Laughlin, Jr., Benoit, Smith & Laughlin, Arlington, Va., argued for appellant. With him on the brief was Gregory F. Wirzbicki, Unocal Corp., Brea, Cal., of counsel.

Fred E. McKelvey, Sol., Office of the Sol., Arlington, Va., argued for appellee. With him on the brief were Richard E. Schafer, Associate Sol. and Joseph F. Nakamura, Washington, D.C.

Allen S. Melser and Linda J. Shapiro, Mason, Fenwick & Lawrence, Washington, D.C., were on the brief for amicus curiae Chemical Mfrs. Ass'n.

William S. Thompson, President, American Intellectual Property Law Ass'n, Arlington, Va., was on the brief for amicus curiae American Intellectual Property Law Ass'n. With him on the brief were Donald R. Dunner, Herbert H. Mintz, and Thomas L. Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C. Also on the brief was Harold C. Wegner, Wegner & Bretschneider, Washington, D.C., of counsel.

Professor Irving Kayton, Washington, D.C., was on the brief for amicus curiae Professor Irving Kayton.

Robert A. Chittum, President, Rochester Patent Law Ass'n, Rochester, N.Y., was on the brief for amicus curiae Rochester Patent Law Ass'n.

Before NIES, Chief Judge, RICH, Circuit Judge, COWEN, Senior Circuit Judge, MARKEY ^*, NEWMAN, ARCHER, MAYER, MICHEL, PLAGER, LOURIE, CLEVENGER, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

Diane M. Dillon, assignor to Union Oil Company of California, appeals the November 25, 1987, decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO), Appeal No. 87-0944, rejecting claims 2-14, 16-22, and 24-37, all the remaining claims of patent application Serial No. 671,570 entitled "Hydrocarbon Fuel Composition." We affirm the rejection of all of the claims. ¹

The Invention

Dillon's patent application describes and claims her discovery that the inclusion of certain tetra-orthoester compounds in hydrocarbon fuel compositions will reduce the emission of solid particulates (i.e., soot) during combustion of the fuel. In this appeal Dillon asserts the patentability of claims to hydrocarbon fuel compositions containing these tetra-orthoesters, and to the method of reducing particulate emissions during combustion by combining these esters with the fuel before combustion.

Claim 2 is the broadest composition claim:

2. A composition comprising: a hydrocarbon fuel; and a sufficient amount of at least one orthoester so as to reduce the particulate emissions from the combustion of the hydrocarbon fuel, wherein the orthoester is of the formula:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

wherein R5 , R6 , R7 , and R8 , are the same or different monovalent organic radical comprising 1 to about 20 carbon atoms.

The broadest method claim is claim 24:

24. A method of reducing the particulate emissions from the combustion of a hydrocarbon fuel comprising combusting a mixture of the hydrocarbon fuel and a sufficient amount of at least

one orthoester so as to reduce the particulate emissions, wherein the orthoester is of the formula:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

wherein R5 , R6 , R7 , and R8 , are the same or different monovalent organic radical comprising 1 to about 20 carbon atoms.

The other claims contain additional limitations and thus are narrower in scope.

The tetra-orthoesters are a known class of chemical compounds. It is undisputed that their combination with hydrocarbon fuel, for any purpose, is not shown in the prior art, and that their use to reduce particulate emissions from combustion of hydrocarbon fuel is not shown or suggested in the prior art.

The Rejection

The Board held all of the claims to be unpatentable on the ground of obviousness, 35 U.S.C. Sec. 103, in view of certain primary and secondary references. As primary references the Board relied on two Sweeney U.S. patents, 4,390,417 ('417) and 4,395,267 ('267). Sweeney '417 describes hydrocarbon fuel compositions containing specified chemical compounds, viz., ketals, acetals, and tri-orthoesters, ² used for "dewatering" the fuels, particularly diesel oil. Sweeney '267 describes three-component compositions of hydrocarbon fuels heavier than gasoline, immiscible alcohols, and tri-orthoesters, wherein the tri-orthoesters serve as cosolvents to prevent phase separation between fuel and alcohol. The Board explicitly found that the Sweeney patents do not teach the use of the tetra-orthoesters recited in appellant's claims.

The Board cited Elliott U.S. Patent 3,903,006 and certain other patents, including Howk U.S. Patent 2,840,613, as secondary references. Elliott describes tri-orthoesters and tetra-orthoesters for use as water scavengers in hydraulic (non-hydrocarbon) fluids. The Board stated that the Elliott reference shows equivalence between tetra-orthoesters and tri-orthoesters, and that "it is clear from the combined teachings of these references ... that [Dillon's tetra-orthoesters] would operate to remove water from non-aqueous liquids by the same mechanism as the orthoesters of Sweeney."

The Board stated that there was a "reasonable expectation" that the tri- and tetra-orthoester fuel compositions would have similar properties, based on "close structural and chemical similarity" between the tri- and tetra-orthoesters and the fact that both the prior art and Dillon use these compounds as "fuel additives." The Commissioner argues on appeal that the claimed compositions and method "would have been prima facie obvious from combined teachings of the references." On this reasoning, the Board held that unless Dillon showed some unexpected advantage or superiority of her claimed tetra-orthoester fuel compositions as compared with tri-orthoester fuel compositions, Dillon's new compositions as well as her claimed method of reducing particulate emissions are unpatentable for obviousness. It found that no such showing was made.

The Issue

The issue before this court is whether the Board erred in rejecting as obvious under 35 U.S.C. Sec. 103 claims to Dillon's new compositions and to the new method of reducing particulate emissions, when the additives in the new compositions are structurally similar to additives in known compositions, having a different use, but the new method of reducing particulate emissions is neither taught nor suggested by the prior art.

The Broad Composition Claims

Claim 2, the broadest composition claim, comprises a hydrocarbon fuel and an amount of tetra-orthoester sufficient to reduce the particulate emissions from the combustion of the hydrocarbon fuel. The other composition claims contain various limitations including a minimum amount of emission reduction to be achieved (claim 3), percentages of ester in the fuel (claims 4, 5, 16, 20, 21), use of different esters (claims 6-10, 17-19), use of different fuels (claims 11-14, 22), and the requirement that the composition be essentially free of alcohol (claims 36, 37).

The Board stated in its opinion that, to the extent that appellant had not chosen to separately argue the patentability of the appealed claims, "they stand or fall together," citing In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed.Cir.1983). We agree with the Board except as noted briefly below. It is not the practice of this court to review claims that an applicant has not separately argued at the Board level, because, inter alia, we lack the benefit of the Board's reasoned decision on the separate patentability of those claims. Id. at 1376, 217 USPQ at 1096; In re Herbert, 461 F.2d 1390, 1391, 59 CCPA 1091, 174 USPQ 259, 260 (CCPA 1972). We will therefore review only the merits of the composition claims, as did the Board.

The Board found that the claims to compositions of a hydrocarbon fuel and a tetra-orthoester were prima facie obvious over Sweeney '417 and '267 in view of Elliott and Howk. We agree. Appellant argues that none of these references discloses or suggests the new use which she has discovered. That is, of course, true, but the composition claims are not limited to this new use; i.e., they are not physically or structurally distinguishable over the prior art compositions except with respect to the orthoester component. We believe that the PTO has established, through its combination of references, that there is a sufficiently close relationship between the tri-orthoesters and tetra-orthoesters (see the cited Elliott and Howk references) in the fuel oil art to create an expectation that hydrocarbon fuel compositions containing the tetra-esters would have similar properties, including water scavenging, to like compositions containing the tri-esters, and to provide the motivation to make such new compositions. Howk teaches use of both tri- and tetra-orthoesters in a similar type of chemical reaction. Elliott teaches their equivalence for a particular practical use.

Our case law well establishes that such a fact situation gives rise to a prima facie case of obviousness. See In re Shetty, 566 F.2d 81, 85, 195 USPQ 753, 755-56 (CCPA 1977); In re Albrecht, 514 F.2d 1385, 1388, 185 USPQ 590, 593 (CCPA 1975); In re Murch, 464 F.2d 1051, 1054, 59 CCPA 1277, 175 USPQ 89, 91 (CCPA 1972); In re Hoch, 428 F.2d 1341, 1343, 57 CCPA 1292, 166 USPQ 406, 409 (CCPA 1970).

Appellant cites In re Wright, 848 F.2d 1216, 1219, 6 USPQ2d 1959, 1961 (Fed.Cir.1988), for the proposition that a prima facie case of obviousness requires that the prior art suggest the claimed compositions' properties and the problem the applicant attempts to solve. The earlier panel opinion in this case, In re Dillon, 892 F.2d 1554, 13 USPQ2d 1337 (now withdrawn), in fact stated "a prima facie case of obviousness is not deemed made unless both (1) the new compound or composition is structurally similar to the reference compound or composition...