In re Wilder

• Decision Date: 13 August 1970
• Docket Number: Patent Appeal No. 8194.
• Citation: 429 F.2d 447,166 USPQ 545
• Parties: Application of Gene R. WILDER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

166 USPQ 545, 429 F.2d 447 (1970)

Application of Gene R. WILDER.

Patent Appeal No. 8194.

United States Court of Customs and Patent Appeals.

August 13, 1970.

Ellsworth H. Mosher, Arlington, Va., attorney of record, for appellant; Stevens, Davis, Miller & Mosher, Arlington, Va., of counsel.

Joseph Schimmel, Washington, D. C., for the Commissioner of Patents; Fred W. Sherling, Washington, D. C., of counsel.

Before RICH, BALDWIN, and LANE, Judges, and JONES, Senior Judge, United States Court of Claims, sitting by designation.

BALDWIN, Judge.

Wilder has appealed from the decision of the Patent Office Board of Appeals which sustained the rejection of claims 2, 6, 7, 9, 11, 12 and 14 in his application¹ as unpatentable under 35 U. S.C. § 102 and 35 U.S.C. § 103 over a patent to Stahly.² In his brief, appellant has moved to dismiss the appeal as to claims 11, 12 and 14. That motion is hereby granted, thus leaving claims 2, 6, 7 and 9 for our consideration.

THE INVENTION

We note, as did the board, that "the nature of the asserted invention is evident from the reproduced claims." Claims 2 and 7 are representative of the claims now on appeal. We reproduce them, at the suggestion of appellant, in analytical form:

2. Preserved rubber having minimal toxicity to human skin comprising

1 natural rubber having incorporated therein

2 an amount sufficient to inhibit degradation of

a N - (1,3 - dimethylbutyl) - N\' - phenyl - p - phenylenediamine

the rubber containing said adjuvant being neither a primary irritant nor a sensitizing agent.

7. Preserved rubber having minimal toxicity to human skin comprising

1 synthetic sulfur-vulcanizable diene hydrocarbon rubber having incorporated therein

2 an amount sufficient to inhibit degradation of

a N - (1,4-dimethylamyl) - N\'- phenyl - p - phenylenediamine,

the rubber containing said adjuvant being neither a primary irritant nor a sensitizing agent.

Claim 6 defines the rubber using the same broad language as claim 7, and recites the same, 1,3-dimethylbutyl inhibitor of claim 2. Claim 9 differs from claim 2 only in that the rubber claimed is "unvulcanized styrene-butadiene copolymer".

For a further understanding of the invention, we quote from appellant's specification:

It has been long recognized that N - alkyl - N\' - phenyl - p - phenylenediamines inhibit the aging of natural rubber. More recently, it was found that N-isopropyl-N\' -phenyl-p-phenylenediamine inhibits exposure cracking of synthetic rubber vulcanizates and this compound has come into considerable commercial use for this purpose. However, it is a skin sensitizer and volatile enough to cause numerous cases of skin eruption among workers processing the rubber. Moreover, it is much too soluble in the aqueous coagulation medium used for SBR to be considered for protecting unvulcanized SBR.

Appellant's claims are based on the discovery that rubber containing either of the two specific antidegradants claimed does not have the toxic effect alleged to be possessed by the other N-alkyl-N'-phenyl-p-phenylenediamines.

THE REJECTIONS

The examiner rejected the claims on appeal "as unpatentable over Stahly under 35 USC 102." That patent contains what amounts to a generic disclosure, broadly teaching that the entire class of N-alkyl-N'-phenyl-p-phenylenediamines (to which class appellant's specific adjuvants belong) is effective for preserving all kinds of rubber against the deteriorative action of ozone. Broadly stating first that the alkyl substitute may be primary, secondary or tertiary, branched or straight chain and may be substituted with aryl or cycloalkyl groups, the patent disclosure goes on to recite that excellent stabilizing properties are possessed by those phenylenediamines in which the alkyl group contains from 1 to 19 carbon atoms and further that members of the class in which the alkyl group contains from 1 to 9 carbons "are especially effective."

Becoming more particular, later on, the patent sets out two separate groups of specific phenylenediamines "containing alkyl groups in the preferred range of number of carbon atoms". The first group contains 8 compounds, the alkyl group containing from 3 to 9 carbon atoms and showing most of the stated configurations (e. g. secondary, tertiary, aryl-substituted). The second group recites 16 more alkyl substitutes wherein the number of carbon atoms ranges from 1 to 19 and varying configurations are also indicated. Of this latter group, the express recitations of the 1,3-dimethylbutyl and 1-methylhexyl radicals are of particular interest as they are the specific disclosures upon which the appealed rejections are based.

The method of incorporating the phenylenediamines into the rubber is taught by Stahly and specific mention of several types of rubbers, all being sulfur-vulcanizable diene hydrocarbon rubbers and including both those specifically recited in the instant claims, is made. Examples describing the preservative effect on various rubbers of several of the N,N'-substituted p-phenylenediamines from both of the groups of specific compounds mentioned earlier are also given.

Stahly's patent contains no express disclosure of the exact compositions defined in the claims now on appeal nor does it contain any hint that his compositions would possess any skin irritating or sensitizing property. Regardless of these facts, the examiner took the position that the claims now before us were anticipated by Stahly's disclosure. While he conceded that the compound recited in claim 7 on appeal was not exactly recited in the patent, he felt that the recited compound and Stahly's 1-methyl hexyl variant "may be the same." When appellant submitted affidavits substantiating the asserted advantage of the claimed compositions, the examiner responded:

It is respectfully submitted that even with the affidavit and assuming that the showings of non-toxicity are completely valid for the compositions so limited by the instant claims, there can be no patentable invention where novelty does not exist, albeit all of the properties of said compositions were not previously recognized.

* * * * * *

The Examiner has not ignored the limitation relative to toxicity, as urged by appellant. However, said limitation has to be considered meaningless when it only goes to describe a property of a composition recited by the instant claims which composition, itself, is shown by the prior art to be lacking in novelty since it is fully anticipated and recited.

The Board of Appeals sustained the rejection, upholding the examiner on all grounds with regard to claims 2, 6 and 9. As to claim 7, the board stated:

The compound of Stahly relied upon by the Examiner is a position isomer of the compound defined by the claims. However, no showing as to difference in toxicity of these two compounds when incorporated in rubber has been made, and their chemical similarity is apparent. If the compound of claims 7 and 12 is not fully anticipated under 35 U.S.C. 102, it is obvious under 35 U.S.C. 103. The rejection of claims 7 and 12 will also be sustained.

OPINION

Considering first the rejection of claims 2, 6 and 9 under 35 U.S.C. § 102, we have concluded that the rejection is sustainable. Appellant's arguments attacking the position taken by the Patent Office in this rejection appear to be made on three different levels. It is argued initially that the disclosure of the Stahly patent does not anticipate the claimed compositions. Secondly, it is asserted that even though there may be a technical anticipation, the discovery of the new property and the recitation of this property in the claims "lends patentable novelty" to the claims. Finally the court is urged to ignore the "fortuitous suggestions" of the prior art, overrule the "doctrine" of In re Thuau, 135 F.2d 344, 30 CCPA 979 (1943), and recognize the commercial importance of appellant's discovery.

Employing, if we may, a syllogistic analysis to answer appellant's arguments, we start with the proposition that claims cannot be obtained to that which is not new. This was the basis of the holding in In re Thuau. It was the law then, is now and will be until Congress decrees otherwise. So...