Geiger, In re
| Decision Date | 01 April 1987 |
| Docket Number | No. 86-1103,86-1103 |
| Parties | In re Gary E. GEIGER. * Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Bruce E. Peacock, Betz Laboratories, Inc., Trevose, Pa., argued, for appellant.
Robert D. Edmonds, Associate Sol., Office of the Sol., Arlington, Va., argued, for appellee. With him on the brief, were Joseph F. Nakamura, Sol. and Fred E. McKelvey, Deputy Sol.
Before NEWMAN, Circuit Judge, SKELTON, Senior Circuit Judge, and ARCHER, Circuit Judge.
This is an appeal from a decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board), Appeal No. 606-09, affirming the examiner's rejection of all remaining claims, 43-63 and 65-67, in appellant's patent application, Serial Number 373,903 ('903), under 35 U.S.C. Sec. 103. We reverse.
OPINIONThe '903 application, filed on May 3, 1982, is directed to a method of inhibiting scale formation on and corrosion of metallic parts in cooling water systems by use of compositions containing (1) a sulfonated styrene/maleic anhydride (SSMA) copolymer, (2) a water soluble zinc compound, and (3) an organo-phosphorus acid compound or water soluble salt thereof.
In its decision dated February 7, 1986, the board affirmed the examiner's rejections under 35 U.S.C. Sec. 103, finding that the claimed subject matter would have been obvious in view of various combinations of references, but with reliance primarily upon U.S. Patent No. 4,209,398 issued to Ii, et al. (Ii), U.S. Patent No. 4,374,733 issued to Snyder, et al. (Snyder '733) and U.S. Patent No. 4,255,259 issued to Hwa, et al. (Hwa). 1
The Ii patent discloses use in cooling water systems of scale and corrosion prevention compositions comprised of a polymeric component in combination with one or more compounds selected from the group consisting of inorganic phosphoric acids and water soluble salts thereof, phosphonic acids and water soluble salts thereof, organic phosphoric acid esters and water soluble salts thereof, and polyvalent metal salts. Although the Ii polymeric component may contain maleic acid and styrene monomers, there is no disclosure of the specific copolymer, SSMA, required in applicant's claims.
The Snyder '733 patent discloses a method for treating cooling water systems prone to scale formation by the addition of a composition comprised of an acrylic acid/lower alkyl/hydroxy acrylate copolymer and another polymeric component, which may be SSMA or a styrene/maleic anhydride (SMA) copolymer. The Snyder '733 patent notes that boiler and cooling water systems share a common problem in regard to scale deposit formation and that use of SMA to prevent scale in boiler water systems is known.
The Hwa patent is directed to a method for treating boiler water systems that are prone to scale formation by addition of a composition comprised of SSMA and an organo-phosphorus acid compound.
The remaining references, cited with respect to certain dependent claims, contain no suggestion to use SSMA, the specific copolymer recited in the appealed claims.
Based upon the prior art and the fact that each of the three components of the composition used in the claimed method is conventionally employed in the art for treating cooling water systems, the board held that it would have been prima facie obvious, within the meaning of 35 U.S.C. Sec. 103, to employ these components in combination for their known functions and to optimize the amount of each additive. The board further held that data appearing in appellant's specification, and supplemented by a declaration submitted pursuant to 37 C.F.R. Sec. 1.132, provided insufficient evidence of nonobviousness to rebut the prima facie case.
1. Whether the board erred in finding that a prima facie case of obviousness was established.
2. Assuming that a prima facie case of obviousness was established, whether the board erred in finding that appellant's objective evidence with regard to unexpected results was insufficient to rebut that prima facie case.
Obviousness is a question of law based upon the factual inquiries mandated in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966). Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447, 230 USPQ 416, 419 (Fed.Cir.1986). For a conclusion of obviousness, the standard of review is correctness or error as a matter of law. In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985); In re DeBlauwe, 736 F.2d 699, 703, 222 USPQ 191, 195 (Fed.Cir.1984).
Appellant contends that the PTO failed to establish a prima facie case of obviousness and, consequently, that the board's affirmance of the examiner's rejections was erroneous. Appellant argues that the PTO's position represented hindsight reconstruction or, at best, established that it would have been "obvious to try" various combinations of known scale and corrosion prevention agents, including the combination recited in the appealed claims.
We agree with appellant that the PTO has failed to establish a prima facie case of obviousness. Obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination. ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.Cir.1984). We are convinced that the latter are not present here.
Ii does not suggest use of SSMA as its claimed polymeric component and does not require the presence of an organo-phosphorus acid compound or of a zinc compound. Ii notes that it is difficult to maintain a predetermined concentration of polyvalent metal ions, such as the zinc (II) ion, in alkaline cooling water, but states that its claimed polymeric component prevents the "polyvalent metals from becoming insoluble compounds and precipitating...." Although Snyder '733 discloses use of SSMA, it is for the purpose of showing that it, or one of three other specifically recited copolymers, may be used in combination with yet another polymeric component, an acrylic acid/lower alkyl/hydroxy acrylate copolymer, to prevent scale formation. With respect to claims 47 and 49, Hwa does disclose the specifically-recited organo-phosphorus acid compound. It provides, however, no suggestion to add a zinc compound to its disclosed combination of SSMA and organo-phosphorus acid compounds, or to use SSMA in combination with an organo-phosphorus acid compound in the treatment of a cooling water system, where the characteristics may significantly differ from those in Hwa's boiler water system. Hwa also provides no suggestion that SSMA could prevent precipitation of the zinc (II) ion in alkaline cooling water in the manner ascribed to the polymeric component of Ii.
At best, in view of these disclosures, one skilled in the art might find it obvious to try various combinations of these known scale and corrosion prevention agents. However, this is not the standard of 35 U.S.C. Sec. 103. In re Goodwin, 576 F.2d 375, 377, 198 USPQ 1, 3 (CCPA 1978); In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966).
Because we reverse on the basis of failure to establish a prima facie case of obviousness, we need not reach the issue...
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