Dillon, In re

• Decision Date: 29 December 1989
• Docket Number: No. 88-1245,88-1245
• Parties: , 13 U.S.P.Q.2d 1337 In re Diane M. DILLON.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1554

892 F.2d 1554

58 USLW 2447, 13 U.S.P.Q.2d 1337

In re Diane M. DILLON.

No. 88-1245.

United States Court of Appeals Federal Circuit.

Dec. 29, 1989.

Suggestion for Rehearing In Banc Accepted and Judgment

Vacated May 21, 1990.

Archer, Circuit Judge, dissented and filed opinion.

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.

Before NEWMAN and ARCHER, Circuit Judges, and COWEN, Senior Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Diane M. Dillon, assignor to Union Oil Company of California, appeals the decision of the Board of Patent Appeals and Interferences ("Board") of the United States Patent and Trademark Office ("PTO"), November 25, 1987, rejecting claims 2 through 14, 16 through 22, and 24 through 37, all the remaining claims of patent application Serial No. 06/671,570 entitled "Hydrocarbon Fuel Composition". We reverse.

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 presents claims to hydrocarbon fuel compositions containing these tetra-orthoesters, and to the method of use of these compositions to reduce particulate emissions during 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 R sub5 , R sub6 , R sub7 and R sub8 are the same or different mono-valent 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 R sub5 , R sub6 , R sub7 and R sub8 are the same or different mono-valent organic radical comprising 1 to about 20 carbon atoms.

The other claims are narrower in scope and/or contain additional limitations. In view of our decision, the other claims need not be separately considered.

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. § 103, in view of certain primary and secondary references. As primary references the Board relied on two Sweeney United States Patents, Nos. 4,390,417 and 4,395,267. Sweeney '417 describes hydrocarbon fuel compositions containing specified chemical compounds, i.e., ketals, acetals, and tri-orthoesters, ¹ used for "dewatering" the fuels. Sweeney '267 describes three-component compositions of hydrocarbon fuels heavier than gasoline, immiscible alcohols, and tri-orthoesters, wherein the tri-orthoesters serve as co-solvents to prevent phase separation between fuel and alcohol. The Board explicitly found: "The Sweeney patents do not teach the use of the orthoesters recited in appellant's claims."

The Board cited Elliott et al. United States Patent No. 3,903,006 (and certain other patents, not here significant) as secondary references. Elliott describes tri-orthoesters and tetra-orthesters 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-orthoesters would have similar properties, based on "close structural and chemical similarity" and the fact that both the prior art and Dillon use these compounds as "fuel additives". The Board stated that since the tetra-orthoesters were known to serve as water scavengers in hydraulic fluids, "there is a reasonable expectation that the prior art compositions will have properties similar to the claim compositions"; that is, that the tri-orthoesters would be expected to reduce particulate emissions. Although no reference was cited as suggesting the use of any orthoester to reduce particulate emissions, ² or to show a relationship between the property of water scavenging and the property of reducing particulate emissions from combustion, the Board concluded, and the Solicitor argues on appeal, that the claimed composition and method "would have been prima facie obvious from the 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 their new use to reduce particulate emissions were unpatentable for obviousness.

The Board then analyzed Dillon's specification, wherein Dillon had disclosed that both tri- and tetra-orthoesters are effective in reducing particulate emissions from combustion of hydrocarbon fuels, and presented data to illustrate this property. The Board held that because these data do not show the unexpected particulate-reduction superiority of the tetra-orthoester compositions as compared with the tri-orthoester compositions, Dillon had not overcome the prima facie case of obviousness.

The Solicitor maintains that it is not of controlling weight, or even pertinent, that there is no prior art suggesting Dillon's use of reducing particulate emissions, for any compositions similar to those claimed by Dillon. The Solicitor maintains that the existence of the tri-orthoester compositions of Sweeney, which are taught to have an entirely unrelated property and use, suffice to make a prima facie case of obviousness as to Dillon's method as well as her composition claims.

The Issue

The issue is the patentability in terms of 35 U.S.C. § 103 of claims to Dillon's new composition and claims to its new method of use, when the components of the new composition are deemed to be structurally similar to components of known compositions, but the new use discovered by Dillon for her new composition is neither taught nor suggested in the prior art. The threshold question is whether, under such circumstances, a prima facie case of unpatentability for obviousness is deemed made. ³

I The Composition Claims

The facts as to the prior art are not in dispute; only the conclusions drawn therefrom are at issue. Sweeney shows compositions of tri-orthoesters in hydrocarbon fuels for the purpose of scavenging water in the fuels; Elliott shows that both tri- and tetra-orthoesters have the property of scavenging water in hydraulic liquids. No reference shows compositions of tetra-orthoesters in hydrocarbon fuels for any purpose, and no reference shows any orthoester fuel composition having the property and utility of reducing particulate emissions from combustion of fuels.

The Board held that a prima facie case of obviousness was made despite the fact that Dillon's compositions were new, and despite the absence of any suggestion in the prior art that these compositions would have the property and use discovered by Dillon. In view of this retrenchment by the Board from the weight of precedent, we have undertaken to review the history of this jurisprudence.

A

The variety of factual situations that have arisen, in the Court of Customs and Patent Appeals, the Court of Claims, and in the Federal Circuit, has produced a rich body of precedent, as the courts sought to identify unifying criteria and apply consistent reasoning to determinations of the question of obviousness of composition and compound claims. Procedural as well as substantive rules were established, to facilitate the uniform application of 35 U.S.C. § 103 despite great diversity in technological facts and in the relationship of the prior art to the inventions at issue.

Thus, as the first step in the examination process, the PTO determines whether a prima facie case of obviousness is deemed made, based on the specification, the prior art, and any other evidence before the examiner. If a prima facie case is made, the applicant may adduce evidence and present argument in rebuttal, following which the determination of obviousness is made on all the evidence. If a prima facie case is not made, no rebuttal is necessary. See the discussion in In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed.Cir.1984); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); and cases cited therein.

As we will discuss, some early CCPA cases held that a prima facie case of obviousness could be made based solely on similarity of structure, independent of properties and use; but by the 1960's, and thereafter, the weight of CCPA and Federal Circuit authority is that the chemical structure and the properties or utility must all be considered in determining whether a prima facie case of obviousness has been made. The early status was explained in In re Lunsford, 357 F.2d 380, 382 n. 2, 148 USPQ 716, 718 n. 2 (...