This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection for obviousness under 35 U.S.C. § 103 of claims 11, 12, and 13 in appellant's application serial No. 651,108, filed July 5, 1967, entitled "Crystalline Aluminosilicate and Method of Preparing the Same."
Appellant describes his contribution to the "Useful Arts."
(1) Appellant has discovered and synthesized a novel zeolite identified by the symbol ZK-22 and described more fully by the following allowed claims of appellant's application:
1.0 ± 0.2 [(1-x) [CH) N]O:xM/n 0]:A1 O:YSiO:ZPO
Claims 1-4, 6, and 7 directed specifically to the zeolite composition stand allowed.
(2) The second aspect of appellant's invention is the method for making ZK-22, and the Patent Office has also allowed claims in this application directed thereto.
(3) What appellant describes as the third aspect of his discovery is the subject matter of this appeal: claims 11, 12, and 13, directed to a hydrocarbon conversion process which involves the use of appellant's novel zeolite as a catalyst to crack hydrocarbons. Appealed claim 11 reads:
Claims 12 and 13 also call for cracking of hydrocarbons with the new zeolite catalyst material, differing only in the specific form of the zeolite catalyst employed. Instead of cracking being performed with the catalyst in a hydrogen form pursuant to claim 11, cracking according to claims 12 and 13 is performed with the catalyst in the rare earth metal form. Claims 12 and 13 are also both dependent upon allowed claims to the zeolite composition in this application. Appellant concedes that claims
The Rejection and the Issues
The sole rejection of the appealed claims is for obviousness under 35 U.S.C. § 103 in view of a single reference, Frilette patent N. 3,033,778, issued May 8, 1962, which discloses the cracking of hydrocarbons using crystalline aluminosilicate zeolite catalysts which are similar to but patentably different from ZK-22 zeolite. Appellant admits that his zeolite is "useful in the cracking of hydrocarbons employing generally the same temperatures, liquid hourly space velocity and ratio of catalyst to hydrocarbon charge" taught by Frilette.
The examiner rejected the appealed claims "as the obvious use of the catalyst for the conversion of hydrocarbons." In his Answer, the examiner further stated that "Applicant has not shown by comparative results with such crystalline alumino silicate that he obtains unexpected results and it is in [the?] view of the Examiner that in the absence of such a showing applicant is not entitled to the use claims for the cracking of hydrocarbons." (Emphasis ours.)
The board noted that the examiner's rejection of the claims as being directed to the obvious use of the claimed aluminosilicate was "necessarily under 35 U.S.C. § 103" and agreed with the examiner that to be unobvious there would have to be a showing by appellant that the use of his admittedly novel catalyst in the hydrocarbon cracking process of Frilette gave unexpected results. The board found there was "no evidence that anything other than the usual results will be obtained when the claimed zeolites are used to crack hydrocarbons" and therefore held the appealed process claims obvious under § 103.
Appellant's position is that the process is unobvious, that the contention that appellant must show unexpected results "is based upon the premise that the use claims need be patentable over the composition claims," and that the board's approach necessarily treats appellant's own disclosure as "prior art" under 35 U.S.C. § 103, which it is not. Appellant contends further that he is entitled to claims directed to the process of using his ZK-22 zeolite, because the Patent Office found that zeolite to be new and unobvious, the hydrocarbon conversion process claims being just another method of expressing, with reasonable latitude, what appellant regards as his invention. Appellant's position here is that the claims to the process of using the new and unobvious catalyst are necessarily directed to unobvious subject matter under 35 U.S.C. § 103 and therefore allowable. Appellant's brief states:
The solicitor supports the view that the process invention is obvious in view of the teachings of Frilette since appellant has shown no unexpected result with the use of ZK-22 to crack hydrocarbons. He reasons as follows:
With respect to appellant's argument that the board's decision, in treating the process claims, necessarily considers appellant's composition as though it were old and thus prior art under 35 U.S.C. § 103, the solicitor focuses upon the language of 35 U.S.C. § 103
The solicitor continues with an explanation of the way he believes the obviousness of the appealed claims must be determined in view of several decisions of this court:
Finally, the solicitor takes issue with appellant's contention that "appellant's process-of-use claims should be allowed because he is entitled to `reasonable latitude' in claiming what he regards as his invention." The solicitor states that the reasonableness of claiming latitude was properly determined by the board's finding that process of use claims are a "reasonable restatement of the invention if the process of use reflects an unexpected utility of the allowed composition."
The arguments of both appellant and the solicitor make much of the facts that there are allowed claims in the application to the zeolite and that the appealed claims represent the method of using the zeolite, a different statutory class of invention.
Appellant states as a broad proposition that the allowance of the composition claims here necessarily entitles him to claims in the same application directed to the method of using the zeolite, which the Patent Office found to be a new and unobvious composition of matter.
In Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), the Supreme Court construed the § 103 standard of obviousness as follows:
The issue here concerns primarily the meaning of the terms "prior art" and "subject matter as a whole" in § 103, and specifically whether appellant's zeolite composition is in any way to be considered as "prior art" for the purposes of applying the statute. Appellant says that the board's decision holding the claims to the method of using the zeolite obvious in view of Frilette "necessarily utilizes as `prior art' appellant's own disclosure" of the zeolite. To the extent that the board may have affirmed the examiner's view that the process claims represented "the obvious use of the [ZK-22] catalyst for the conversion of hydrocarbons," this appears to be the case. The examiner's language does appear to treat incorrectly the ZK-22 zeolite as part of the prior art. The correct application of the test of § 103 requires that the claims on appeal not be judged against any prior art other than Frilette.
In In re Prater, 415 F.2d 1393, 56 C.C.P.A. 1381 (1969), we considered the meaning of the "subject matter as a whole" as well as the fact that § 103 requires consideration of obviousness "at the time the invention was made." Discussing the invention, we said "The invention includes both a method and apparatus." In considering the obviousness of apparatus claim 10, we said:
We have carefully considered the basic position of the Patent Office that it would be obvious to program a general-purpose digital computer to practice appellants' invention and that apparatus claim 10 reads on such a computer, as well as the disclosed analog device. We find that position fatally defective in that it, in effect, assumes the existence as prior art of appellants' discovery * * *. Perhaps today, after reading appellants' disclosure, the public dissemination of which the patent system fosters and encourages, it might be obvious to program a general-purpose digital computer to practice the invention. But 35 U.S.C. 103 requires an analysis of the prior art at the time the invention was made to determine whether the invention was obvious. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Assuming the existence, at the time of the invention, of general-purpose digital computers as well as typical programming techniques therefor, it is nevertheless plain that appellants' invention, as defined in apparatus claim 10, was not obvious under 35 U.S.C. 103 because one not having knowledge of appellants' discovery simply would not
Similarly here, the process "invention as a whole" includes the use of the ZK-22 zeolite and one having no knowledge thereof would not find it obvious to crack hydrocarbons using it as a catalyst. To the extent, therefore, that the examiner and the board held appellant's process-of-use invention to a more stringent standard of unobviousness by requiring appellant to show unexpected results in the use of ZK-22, as compared to the use of other zeolites in cracking hydrocarbons, in order to be "entitled to the use claims," we consider that they erred.
The only prior art of record is Frilette and we must therefore determine the obviousness or unobviousness of the process invention in view of the disclosure of this reference.
Unobviousness in View of Frilette
Frilette discloses a class of crystalline zeolites useful as catalysts for cracking hydrocarbons, and described as crystalline metal aluminosilicates, known as molecular sieves, which have catalytic capabilities by virtue of their three-dimensional network structure made up of unit cells and a "geometric selectivity" dependent upon the relationship between the diameter of ports in the zeolite's crystal structure and the diameters of the reactant and product molecules. Frilette specifically teaches molecular sieves of the "A" series as being members of the class of zeolites which are useful as catalysts for cracking hydrocarbons.
ZK-22 is not so similar to the zeolites of the "A" series identified by Frilette as to render the use of ZK-22 to crack hydrocarbons, albeit in the manner used by Frilette, obvious to one of ordinary skill in the art. ZK-22 is not a homologue, isomer, or chemical analogue of series "A" zeolites. Nor do Frilette's teachings of zeolites broadly define a class, the knowledge of which would render ZK-22 or its use as a catalyst obvious. Furthermore, the differences therebetween appear significant. As appellant's specification correctly notes, ZK-22 has a higher "silica to alumina mol ratio," and "contains intercalated phosphate when crystallized from its reaction mixture." All of these differences are uncontradicted by the Patent Office, the solicitor maintaining only generally that:
Not only are the zeolites of series "A" structurally different from appellant's ZK-22, but the test is not whether one "would expect it to have the same catalytic effect that the known [series "A"] zeolites have," but whether it would have been obvious to one skilled in the art to use ZK-22 to crack hydrocarbons.
The Prior Cases
As noted earlier, the solicitor contends that prior decisions of this court are controlling on the facts here. He maintains that In re Saunders, 154 F.2d 693, 33 C.C.P.A. 1001 (1946), and In re Albertson, 332 F.2d 379, 51 C.C.P.A. 1377 (1964), mandate affirmance.
Saunders was decided prior to the 1952 Act, which inserted § 103 into the statutory law for the first time and made it clear that the test is obviousness of the invention as a whole to a person of ordinary skill in the art at the time the invention was made. Saunders, moreover, does not rest upon the firmest foundation. Of the six cases cited therein for the broad proposition relied on that "where an old method or process is used by an applicant in the administration
Returning to Saunders itself, we think the case no longer represents viable law to the extent that it supports the broad proposition that the obviousness of process claims drawn to a method of using a composition is determined by asking, in the fashion of the court in Saunders, whether "given" the composition the claimed process of use would be obvious.
The solicitor also asserts that a rationale similar to that he finds in Saunders has been sanctioned by this court in decisions rendered after the effective date of the 1952 Act in "analogous circumstances." The alleged analogous circumstance is where the court or the Patent Office has found that a composition or product is new and unobvious but has refused to allow claims to the process for making the unobvious product. The cases are In re Larsen, 292 F.2d 531, 49 C.C.P.A. 711 (1961); In re Hoeksema, 332 F.2d 374, 51 C.C. P.A. 1474 (1964); and In re Albertson, supra. The solicitor maintains by this reasoning that the claims calling for a process using an unobvious composition ought to be treated identically with claims calling for the process of making an unobvious composition. We disagree. The test of unobviousness is a statutory test and requires comparison of the invention with the prior art in each case, whether the invention be a process for making or a process of using, or some other process. We fully agree with the solicitor that "each statutory class of claims must be considered independently on its own merits" and likewise feel that each category of process claims must be similarly considered. No one rule controls them all.
While there may be some distinction between the Larsen line of cases which deal with the obviousness of a process of making a composition and the Saunders case, the principal opinion in Larsen also appears to have erroneously approached the § 103 obviousness question by asking whether "given the idea of the compound" (our emphasis) the process for making it is obvious (see MPEP § 706.03(q)). To this extent, at least, Larsen and its progeny, Hoeksema and Albertson, are inconsistent with the statutory standards of § 103.
Secondly, we do not read Larsen as ruling that an applicant cannot have claims to the method of making an admittedly novel product, but only that such an applicant does not get such claims just because the product is new and unobvious. In In re Neugebauer, 330 F.2d 353, 51 C.C.P.A. 1138 (1964), we considered the obviousness of claims for a method of making an electrophotographic material by a single step coating process, where claims were allowed to the electrophotographic material. The court considered the claimed invention in view of the prior art cited and held the invention obvious. In Neugebauer, Larsen was relied upon to controvert an allegation of the appellant there that the fact that he had allowed claims to the electrophotographic material entitled him to claims to the method of making it. We said:
We say the same thing here, noting that allowability of the composition claims does not mandate reversal of the § 103 rejection.
In re Albertson, supra, is not inconsistent, that case stating the general proposition that "We must consider `the differences between the subject matter sought to be patented and the prior art' under 35 U.S.C. 103." The solicitor correctly states that "In Albertson, this Court, citing Larsen, held a process to be obvious even though both the final product and the starting material were unobvious." The process invention there, however, was characterized as reducing the new starting material, A, with a well-known agent for reducing any compound having the characteristic
We note that in the present case the novel catalyst, ZK-22, is not merely itself reduced by a well-known reducing agent but itself catalyzes the hydrocarbon charge in the claimed process, a result that was not predictable until appellant had made his invention.
Finally, the solicitor takes issue with appellant's contention "that his process-of-use claims should be allowed because he is entitled to `reasonable latitude' in claiming what he regards as his invention." Appellant maintains that "hydrocarbon conversion" is "the very purpose behind research directed to the synthesis of novel catalyst substances" and that the method-of-use claims represent part of what "applicant regards as his invention." (See 35 U.S.C. § 112, second paragraph.) The solicitor says the question here "is what is a reasonable restatement of the invention" and he concludes, with the board, that the process-of-use claims are a reasonable restatement only "if the process of use reflects an unexpected utility of the allowed composition."
We disagree with both premise and conclusion. The rejection here is under § 103 and the obviousness of the claimed process does not depend upon whether the claims are "a reasonable restatement of the invention." We have concluded, for reasons stated above, that the process-of-use claims are patentable and that it was not necessary to show unexpected utility in order to show unobviousness. We would add, moreover, that in our view it is in the public interest to permit appellant to claim the process as well as the product. The result is to encourage a more detailed disclosure of the specific methods of using the novel composition he has invented in order to have support for the process claims.
We believe the constitutional purpose of the patent system is promoted by encouraging applicants to claim, and therefore to describe in the manner required by 35 U.S.C. § 112, all aspects of what they regard as their inventions, regardless of the number of statutory classes involved. The dependent claims on appeal to the use of the new zeolite in the same application with the composition claims do not materially increase the scope of protection of his inchoate patent property under 35 U.S.C. § 154, which already includes the right to exclude others from making, using, or selling the composition by allowance of claims thereon, but they do tend to increase the wealth of technical knowledge disclosed in the patent by encouraging
For the foregoing reasons, the rejection of claims 11, 12, and 13 is reversed.
The court then went on to do exactly what we do here, that is, apply the art cited to determine if the method claim was obvious thereover. In doing so, even without the guidance of § 103 of the 1952 Act, the court found that the compositions used in the method of the claim were not only homologues and analogues of prior art compounds, and themselves unpatentable where separately claimed, but that the method of use invention was obvious. The converse is true here where the Frilette reference does not teach a homologous or analogous relationship of ZK-22 to the prior art such as might make the composition, let alone the method, obvious to one skilled in the art.