In re Fracalossi

MILLER, Judge,

with whom BALDWIN, Judge, joins, concurring.

The only rejection made below was for obviousness ( 35 U.S.C. § 103 ). The majority affirms the section 103 obviousness rejection because it concludes that there is a “lack of novelty.” However, the statutory language makes clear that “lack of novelty” is not a basis for a section 103 rejection. 1 To add a rejection for “lack of novelty” for the first time on appeal would deny appellants administrative due process. See, e.g., In re Waymouth, 486 F.2d 1058, 1061 , 179 U.S.P.Q. 627 , 629 (C.C.P.A.1973); In re Ark-ley, 59 C.C.P.A. 804, 809 , 455 F.2d 586, 589 , 172 U.S.P.Q. 524, 527 (1972). Accordingly, the court should address only the issue of patentability raised below — the obviousness of the claimed foams in view of Olstowski’s teachings.

The majority opinion relies on In re Pearson, 494 F.2d 1399 , 181 U.S.P.Q. 641 (C.C.P.A.1974) as justification for affirming the section 103 rejection on the basis of “lack of novelty,” but omits from its quotation the following footnote, which underscores the crucial difference between that case and this one:

The record establishes that appellant was fully aware of the ground of rejection being put forth regardless of its statutory basis. Furthermore, the board, in affirming the rejection under § 103, did not in effect make a new rejection under § 102 as occurred in In re Echerd, 471 F.2d 632 , 176 U.S.P.Q. 321 (C.C.P.A.1973).

Id. at 1402 n.2, 181 U.S.P.Q. at 644 n.2.

Lack of novelty was never argued below and is not mentioned in the briefs on appeal. Rather, the board held that it would have been obvious for a person of ordinary skill in the art to select Olstowski’s example 5 teaching of a flexible foam containing unreacted polyol and to combine it with a flame retardant based on Olstowski’s suggestion (in the context of what additives may be added to any of his foams) that a flame retardant may also be desirable. There was no mention that Olstowski anticipates the appealed claims. The “closest prior art” was never defined as Olstowski’s example 5 foam plus flame retardant. The board stated: “The additional presence of a flame retardant clearly is suggested by Ol-stowski (column 4, lines 7-11) and, although this is not specifically exemplified, it, nevertheless, manifestly is obvious from pat-entee’s teaching.” (Emphasis supplied.) Similarly, the examiner stated that there was “ample motivation to employ the additives together for their expected flameproofing and blowing utilities .. .. ”

Appellants may or may not have been able to overcome a “lack of novelty” rejection with appropriate arguments (see, e.g., the considerations set forth in In re Arkley, supra at 807 , 455 F.2d at 587 , 172 U.S.P.Q. at 526 , and In re Ruschig, 52 C.C.P.A. 1238, 1249-51 , 343 F.2d 965, 973-75 , 145 U.S.P.Q. 274, 281-82 (1965)). However, in reviewing a rejection based solely on obviousness, such as the one on appeal, it is always appropriate to consider objective evidence of unob-viousness. In re Arkley, supra. Although appellants’ evidence is insufficient in this *796 case, I am troubled by the majority opinion’s suggestion that the section 103 rejection “is not in this case rebuttable by evidence’’ and that “the facts present an irrebuttable case of obviousness of product claims.” Aside from the statutory problem with an irrebuttable section 103 case (Graham v. John Deere Co., 383 U.S. 1, 17 , 86 S.Ct. 684, 693 , 15 L.Ed.2d 545 (1966)), I am not persuaded that the prima facie case of obviousness here could never have been overcome. 2 Finally, because the so-called “secondary considerations” relevant to a case of prima facie obviousness are not considered for purposes of determining anticipation, it does not follow that every technically anticipated invention would also have been obvious. See In re Sivaramakrishnan, 673 F.2d 1383 , 213 U.S.P.Q. 441 (C.C.P.A.1982) (C.C.P.A. notes that board reversed section 103 rejection because of comparative tests, while entering section 102 rejection of same claims).

. 35 U.S.C. § 103 provides in part: “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if .... ” (Emphasis supplied.)

. For example, appellants might be able to show that Olstowski’s teaching of equivalence among the five types of particle-containing foams is wrong, e.g., that only the polyol-con-taining foams display the char-forming property-