In Re Dillon

919 F.2d 688 (1990)

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Nature of the Case

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Facts

P's application describes and claims her discovery that the inclusion of certain tetra-orthoester compounds in hydrocarbon fuel compositions will reduce the emission of solid particulates (i.e., soot) during combustion of the fuel. The tetra-orthoesters are a known class of chemical compounds. It is undisputed that their combination with hydrocarbon fuel, for any purpose, is not shown in the prior art, and that their use to reduce particulate emissions from combustion of hydrocarbon fuel is not shown or suggested in the prior art. The Board held all of the claims to be unpatentable on the ground of obviousness. As primary references, the Board relied on two Sweeney U.S. patents, '417 and '267. Sweeney '417 describes hydrocarbon fuel compositions containing specified chemical compounds, viz., ketals, acetals, and tri-orthoesters, used for 'dewatering' the fuels, particularly diesel oil. Sweeney '267 describes three-component compositions of hydrocarbon fuels heavier than gasoline, immiscible alcohols, and tri-orthoesters, wherein the tri-orthoesters serve as cosolvents to prevent phase separation between fuel and alcohol. The Board explicitly found that the Sweeney patents do not teach the use of the tetra-orthoesters recited in P's claims. The Board also cited Elliott U.S. Patent '006 and Howk U.S. Patent '613, as secondary references. Elliott describes tri-orthoesters and tetra-orthoesters for use as water scavengers in hydraulic (non-hydrocarbon) fluids. The Board stated that the Elliott reference shows equivalence between tetra-orthoesters and tri-orthoesters, and that 'it is clear from the combined teachings of these references. . . that P's tetra-orthoesters would operate to remove water from non-aqueous liquids by the same mechanism as the orthoesters of Sweeney.' The Board stated that there was a 'reasonable expectation' that the tri- and tetra-orthoester fuel compositions would have similar properties, based on 'close structural and chemical similarity' between the tri- and tetra-orthoesters and the fact that both the prior art and P use these compounds as 'fuel additives.' The Board held that unless P showed some unexpected advantage or superiority of her claimed tetra-orthoester fuel compositions as compared with tri-orthoester fuel compositions, P's new compositions, as well as her claimed method of reducing particulate emissions are unpatentable for obviousness. P appealed. The Commissioner (D) argues on appeal that the claimed compositions and method 'would have been prima facie obvious from combined teachings of the references.'