In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc).

Facts:

Diane Dillon filed a patent application entitled “Hydrocarbon Fuel Composition” directed to fuel compositions comprising tetra-orthoester compounds and their use in reducing the emission of soot during combustion. The PTO Board of Patent Appeals and Interferences affirmed the examiner’s rejection of all of the claims of the patent application and Dillon appealed to the Court of Appeals for the Federal Circuit.

The tetra-orthoester compounds were a known class of compounds, but the compounds had not been used in combination with hydrocarbon fuels previously. The soot-reducing properties of the compounds had not been disclosed in the prior art.

The Board rejected all of the claims as obvious in light of two key primary references. One of the references disclosed fuel compositions comprising tri-orthoesters as a dewatering agent. The other reference disclosed the use of tri-orthoesters in fuel compositions to prevent the phase separation of alcohol and fuel. The references did not address tetra-orthoesters. The Board also cited references that disclosed the use of tri- and tetra-orthoesters in non-hydrocarbon based fuels as dewatering agents.

The Board concluded that the structural similarity between tri- and tetra-orthoesters gave rise to a reasonable expectation that the claimed compounds would have similar properties and that it had been established that the claims were prima facie obvious. Dillon did not present secondary indicia of non-obviousness and the examiner’s rejection was affirmed.

Issue:

The issue was whether a prima facie case of obviousness had been established when the claimed additives were structurally similar to compounds appearing in the prior art with a different disclosed utility, and where the utility disclosed in the application was neither taught nor suggested in the prior art.

Holding:

A prima facie case of obviousness does not require showing both a structural similarity and a suggestion or expectation that the claimed compound will have the same or similar properties as those disclosed in the application.

The court held that “structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie case. Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have, that the prior art is so deficient that there is no motivation to make what might otherwise appear to be obvious changes, or any other argument or presentation of evidence that is pertinent. There is no question that all evidence of the properties of the claimed compositions and the prior art must be considered in determining the ultimate question of patentability, but it is also clear that the discovery that a claimed composition possesses a property not disclosed for the prior art subject matter, does not by itself defeat a prima facie case. Each situation must be considered on its own facts, but it is not necessary in order to establish a prima facie case of obviousness that both a structural similarity between a claimed and prior art compound (or a key component of a composition) be shown and that there be a suggestion in or expectation from the prior art that the claimed compound or composition will have the same or a similar utility as one newly discovered by applicant.”

Disposition: Affirmed.

In re Diane M. Dillon

Tags: case, Cases, chemical, law, Patent

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