In re Robert J. Gartside

• Decision Date: 15 February 2000
• Citation: 53 USPQ2d 1769,203 F.3d 1305
• Parties: (Fed. Cir. 2000) IN RE ROBERT J. GARTSIDE and RICHARD C. NORTON 99-1241 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1305

203 F.3d 1305 (Fed. Cir. 2000)

IN RE ROBERT J. GARTSIDE and RICHARD C. NORTON

99-1241

United States Court of Appeals for the Federal Circuit

DECIDED: February 15, 2000

Appealed from: Patent and Trademark Office

[Copyrighted Material Omitted]

Alan B. Clement, Heidman, Gibson & Costigan, of New York, New York, argued for appellants.

Mark Nagumo, Associate Solicitor, Office of the Solicitor, of Arlington, Virginia, argued for appellee. With him on the brief were Albin F. Drost, Acting Solicitor; John M. Whealan, Acting Deputy Solicitor; and Nancy Moncys Isacson, Associate Solicitor.

Before LOURIE, CLEVENGER, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

Robert J. Gartside and Richard C. Norton (collectively "Gartside") appeal from the final decision of the Board of Patent Appeals and Interferences holding that claims 34, 35, and 37-47 of application Ser. No. 07/798,627 are unpatentable as obvious under 35 U.S.C. § 103. See Forgac v. Gartside, Paper No. 72 (BPAI May 21, 1998). Because the Board's factual findings relating to its obviousness analysis are supported by substantial evidence, and because the Board did not err in concluding that the claims were unpatentable as obvious as a matter of law, we affirm.

BACKGROUND

A. The Invention

Gartside's application is directed to "cracking" processes, i.e., processes that generate low molecular weight, purified hydrocarbons of desired molecular composition by breaking down impure, high molecular weight hydrocarbon feed oil. Cracking is accomplished by reacting impure feed oil with "solids," particulate matter that induces the breakdown of feed oil by either a thermal or catalytic reaction mechanism. See '627 application, J.A. at 63. The claims at issue are all directed to catalytic cracking processes. Independent claim 47 has been argued to us as being "representative" of claims 34, 35, 37-40, and 42-44 and reads as follows:

47 A catalytic process comprising the steps of:

catalytically cracking hydrocarbon feed oil in a reactor of a catalytic cracking unit in the presence of a cracking catalyst at a temperature

ranging from 1100 to 1500 F to produce a catalytically cracked effluent stream of upgraded oil containing catalyst;

substantially separating said catalyst from said upgraded oil in a separator and a cyclone; and

quenching said upgraded oil downstream of said separator upstream of said cyclone with a quenching oil.

Id. at 51 (paragraphing added). Independent claim 41 is similarly "representative" of dependent claims 45 and 46 and reads as follows:

41. A catalytic process, comprising the steps of: a delivering hot particulate catalytic cracking solids to a catalytic cracking reactor; b delivering a hydrocarbon feed to said reactors; c cracking said hydrocarbon feed in said reactor at a temperature of from 1100 to 1500 F to produce a cracked product;

d separating said catalytic solids from the cracked product;

e quenching said cracked product; wherein the total residence time from step (a) through step (e) ranges from 0.1 to 0.6 seconds.

Id. at 49 (paragraphing added).

B. The Interference Proceeding

Gartside copied claims from Forgac's U.S. Patent 5,043,058, entitled "Quenching Downstream of an External Vapor Catalyst Separator," into the '627 application, attempting to provoke an interference.¹ On February 4, 1994, the Administrative Patent Judge ("APJ") declared the interference between Gartside's application and Forgac's patent. See Paper No. 17 at 1. The APJ designated Gartside as the "senior party" and Forgac as the "junior party" in the interference, because Gartside's application was accorded an effective filing date prior to March 26, 1990, the filing date of the application that issued as Forgac's patent. See id. at 2-3. The APJ also determined that one count encompassed all of the interfering subject matter,² i.e., claims 34-47 of the application and claims 1, 2, and 13 of the patent, and that that count corresponded exactly to claim 47 of the application. See id. at 3-4.

On September 12, 1995, the APJ issued an order addressing the parties' motions filed during the preliminary motion period. See Paper No. 41 at 1-2. Of the parties' eight motions, only two are relevant here: Gartside's motion to designate certain claims as not corresponding to the count, and Forgac's motion for judgment that all of Gartside's claims were unpatentable under 35 U.S.C. § 103. The APJ denied Gartside's motion to designate claims 36, 41, 45, and 46 as not corresponding to the count, concluding that Gartside had failed to show that those claims were patentably distinct from the other claims corresponding to the count. See generally id. at 7-11. The APJ granted in part Forgac's motion for judgment that Gartside's claims were invalid under § 103. See id. at 11. The APJ first observed that while Forgac's motion was directed to all of Gartside's claims corresponding to the count (claims 34-47), Forgac only performed a § 103 analysis as to claim 47. See id. at 11-12. The APJ apparently concluded that this analysis was acceptable with regard to the claims for which Gartside had not presented specific patentability arguments, namely claims 34, 35, 37-40, and 42-44, and indicated that those claims would thus stand or fall based on the arguments made on behalf of claim 47. See id. at 12. Since Gartside argued separately the patentability of claims 36, 41, 45, and 46, the APJ indicated that those claims would be considered apart from claim 47. See id.

Analyzing the claims that stood or fell with claim 47 first, the APJ held that those claims were unpatentable as obvious under § 103. See id. at 12. The APJ based his conclusion on Gartside's U.S. Patent 4,552,645, which teaches a process of thermally cracking feed oil that is nearly identical to the process claimed in claim 47, either alone or in combination with Gartside's U.S. Patent 4,288,235, which discloses apparatus that may be used for both thermal and catalytic processes employing low residence times and quenching to prevent undesired cracking. See id. The APJ found that the motivation to combine the thermal cracking teachings of the '645 patent with a catalytic cracking process as disclosed in the '235 patent arose from the nature of the problem to be solved, viz., undesired cracking due to the presence of thermal or catalytic solids. See id. at 15. Thus, the APJ concluded that claim 47, as well as claims 34, 35, 37-40, and 42-44, were unpatentable under § 103. See id. at 12.

Having previously concluded that claims 36, 41, 45, and 46 did not stand or fall with claim 47, the APJ proceeded to analyze those claims as if Forgac had not placed their patentability at issue. The APJ held, sua sponte, that claims 36, 41, 45, and 46 were unpatentable under § 103, based on the '645 patent in view of U.S. Patent 4,419,221 (Castagnos), or on those two patents in view of the '235 patent, incorporating his reasoning with respect to claims 34, 35, 37-40, 42-44, and 47. See id. at 18-19. As noted above, essentially all of the limitations of claims 34, 35, 37-40, 42-44, and 47 were found in the combination of the '645 patent with the '235 patent. Since claims 36, 41, 45, and 46 each contain all of those limitations, as well as an additional kinetic residence time limitation, the APJ needed to add one additional reference to complete the combination. Accordingly, the APJ added Castagnos to the '645 and '235 patent combination, as Castagnos discloses the precise kinetic residence time recited in claims 36, 41, 45, and 46. See id. at 19-20. The APJ again found that the motivation to combine the teachings of the patents arose from the nature of the problem to be solved, i.e., optimizing yields by avoiding undesired cracking. See id. at 20.³

Gartside requested reconsideration of the denial of his motion to redesignate claims 36, 41, 45, and 46 as not corresponding to the count, see Paper No. 45, and the granting in part of Forgac's motion to hold Gartside's claims unpatentable under § 103, see Paper No. 43. On reconsideration, the APJ denied both of these requests. See Paper No. 49. As for the sua sponte holdings of unpatentability, Forgac and Gartside each filed timely responses, neither of which persuaded the examiner to depart from his earlier holdings, see Paper No. 50 at 15.⁴ The APJ then ordered the parties to show cause why judgment should not be entered against them with respect to the patentability of all the claims corresponding to the count. See id. In response, Forgac and Gartside each requested a final hearing before the Board. See Paper Nos. 51 and 54.

On May 20, 1996, Forgac withdrew his request for a final hearing and authorized the APJ to cancel claims 1, 2, and 13 from the '058 patent. See Paper No. 63 at 1-2. Despite Forgac's withdrawal from the interference, the APJ held that the interference should proceed based on our decision in Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989), as the issues surrounding the patentability of Gartside's claims had been fairly placed at issue and fully developed during the interference, and they therefore should be resolved for the sake of the public interest. See Paper No. 64 at 3-5. Gartside requested reconsideration of this order and asked that his application be remanded to the primary examiner for further prosecution. See Paper No. 65 at 1. The APJ dismissed both requests, see Paper No. 66, and a final hearing was held on May 21, 1998.

The Board first held that the APJ properly concluded that the Board retained jurisdiction over the patentability issues raised in the interference. See Gartside, Paper No. 72 at 9. The Board reasoned that under our decision in Schulze v. Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir. 1998), the Board should decide the patentability issues despite Forgac's withdrawal, as those issues were fairly raised and fully developed in the course of the interference. See id. at 7-9. The Board also noted that...