This is an appeal from the decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") holding claims 1-20 in appellants' application
Appellants claim an improvement over the process of Pagliaro et al. ("Pagliaro") which was the subject of our decision in In re Pagliaro, 657 F.2d 1219, 210 USPQ 888 (CCPA 1981). The Pagliaro process is a method for producing a decaffeinated vegetable material such as coffee or tea. A fatty material is used to extract caffeine from the vegetable material. The caffeine-laden fatty material is separated from the vegetable material and may be regenerated by contacting it with water, which reduces its caffeine content. The resultant aqueous solution may then be treated to recover caffeine. The Pagliaro process, minus the regeneration step, is set forth in the preamble of appellants' Jepson-format claims. Appellants describe and claim their invention as an improvement over the Pagliaro process which comprises regenerating the fatty material by evaporative distillation instead of aqueous extraction. Claim 1 is representative:
Dependent claims 2-6, 8-10, 12-14, 19, and 20 contain various limitations that specify fatty material, vegetable material, time, and temperature and that the caffeine be evaporated from a thin film of fatty material. Claims 7, 11, 15, and 16 specify that a carrier gas be passed over the fatty material to increase the rate of removal of caffeine. Claims 17 and 18 specify the moisture content of the coffee beans.
Waterman et al. ("Waterman"), U. S. patent No. 2,129,596, teaches suspending solid material in vegetable oil, then subjecting the material to evaporative distillation.
Barch, U. S. patent No. 2,817,588, teaches a decaffeination process in which caffeine is removed from a solvent by evaporating the solvent, which is then recirculated.
Bergell, U. S. patent No. 1,996,852, teaches the use of a carrier gas to enhance removal of vaporizable materials from liquids. Bergell also teaches that fatty acids can be removed from neutral oils by evaporative distillation.
Dunning et al. U. S. patent No. 2,779,724, also teaches the use of a carrier gas such as steam in thin film evaporative distillation.
Mitchell et al., U. S. patent No. 3,682,648, teaches controlling the moisture content of coffee beans which are to be extracted with an ester solvent.
The examiner maintained that because the preamble of the claims is in Jepson format, it sets forth "that which is known." Claims 1-6, 8-10, 12-14, 19, and 20 were rejected on the preamble in view of Barch and Waterman. Claims 7, 11, 15, and 16 were rejected on Barch and Waterman in view of Bergell or Dunning et al.; claim 17 was rejected on those four references in view of Mitchell et al.; and claim 18 was rejected on the references applied to claim 1 in view of Mitchell et al.
The Board's Decision
The board affirmed the examiner's rejections and adopted his reasoning as its own. As to whether the preamble portion of the claims was available as prior art, the board stated:
The issues presented are: (1) whether the Pagliaro invention, set forth in the preamble, constitutes "prior art" under 35 U.S.C. § 103, and (2) if so, whether the subject matter claimed would have been obvious to a person of ordinary skill in the art at the time the invention was made in view of that prior art and the references of record.
1. The Pagliaro Invention
The Solicitor contends that appellants' use of the Jepson format preamble in claim 1 constitutes an admission that the Pagliaro process described in the preamble is prior art to them. Appellants do not
What appellants argue is that the above concession is not an admission that said decaffeination process is "legally available as prior art against the claims," and that the PTO's position is in conflict with the decision of this court in In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979).
The way appellants state the issue is: "The preamble of appellants' own claims cannot properly be used as a reference against them." However, more is involved than the claim preamble. Claims must always be read in the light of the specification. Here, the specification makes plain what appellants did and did not invent, as we have noted above, and the claims, taken as a whole, are entirely consistent therewith. Appellants in their brief concede what they did not invent, leaving only the question of law — whether we can use the Pagliaro invention described in the preamble as "prior art" under section 103.
This court has recognized that section 102 is not the only source of section 103 prior art.
We hold that appellants' admission that they had actual knowledge of the prior Pagliaro invention described in the preamble constitutes an admission that it is prior art to them. The Pagliaro process was appellants' acknowledged point of departure, and the implied admission that the Jepson format preamble of claim 1 describes prior art has not been overcome. It is not unfair or contrary to the policy of the patent system
Having established that the Pagliaro process is prior art, our next inquiry is whether appellants' invention as a whole would have been obvious to a person of ordinary skill in the art in view of that process and the other cited references.
Pagliaro teaches a process identical to the process of instant claim 1, except that in the Pagliaro process the step of regenerating the caffeine-laden fatty material comprises removing caffeine by aqueous extraction rather than by evaporative distillation. That Waterman does not teach isolation of caffeine from coffee by extraction using a fatty material followed by separation of the coffee and fatty material is of no consequence, because these steps are taught by Pagliaro. That Waterman suspends coffee in oil or fatty material and directly distills caffeine out of the coffee and through the oil is also immaterial.
The crucial question is whether Waterman teaches that caffeine can be separated from oil by evaporative distillation. We are persuaded that one of ordinary skill in the art would have recognized that if, under given conditions of temperature and pressure, caffeine could be distilled from coffee in oil, then a fortiori caffeine could be distilled from oil containing caffeine but not coffee. Additionally, Pagliaro teaches that vegetable oil extracts caffeine from coffee. Therefore, regardless of Waterman's silence on the point, one of ordinary skill in the art would have understood that caffeine is transferred from the coffee to the oil in the Waterman process before being distilled therefrom.
Because both Pagliaro and Waterman teach a method for separating caffeine from oil, it would have been prima facie obvious to substitute one method for the other. Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious. In re Siebentritt, 54 CCPA 1083, 372 F.2d 566, 152 USPQ 618 (1967). Nevertheless, a reason for making the substitution is provided by Waterman, who states: "[C]affeine may be recovered in pure form under the present invention, avoiding the usual more tedious physical and chemical processes." It is to be noted that, in the Pagliaro process, a caffeine/water solution is obtained that would require further processing to recover pure caffeine.
Appellants' argument that Pagliaro and Waterman are nonanalogous art is without merit, because both Pagliaro and Waterman are concerned with the identical field of endeavor — separating caffeine from coffee and from oil. See In re Pagliaro, supra, 657 F.2d at 1224-25, 210 USPQ at 892 (CCPA 1981).
Appellants argue that no removal of fatty acid degradation products is disclosed by Waterman. However, this "limitation" is insufficient to render the claims unobvious. First, the claims merely require that "any fatty material degradation products present" in the fatty material be vaporized. A situation where no such degradation products are present is not excluded, so that the claims read on a process where no degradation products are removed. Second, the PTO's position that the degradation
Finally, we agree with the board that the various process limitations set forth in the dependent claims would have been obvious to a person of ordinary skill in the art in view of the references cited against the claims.
The decision of the board is affirmed.