Application of Walter M. Budde, Jr

SMITH, Judge

(dissenting).

The majority has concluded that the “Method of Producing Epoxy Fatty Acids, Epoxy Salt Derivatives and Epoxy Alcohols” claimed in appellant’s appealed claims is obvious to one of ordinary skill in this art and hence unpatentable under 35 U.S.C. § 103 .

35 U.S.C. § 103 requires us to determine whether or not the differences between the prior art and the claimed invention as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art.

The invention disclosed by appellant relates to what is said to be a feasible commercial process for making (1) epoxy fatty acids, (2) epoxy fatty acid salts, and (3) epoxy fatty alcohols, without detrimental splitting of the oxirane ring. A significant feature of this process is that the time required for carrying out-the process is sharply reduced.

The products produced by the process-are useful as chemical intermediates in a wide variety of applications such as in. polyester preparations, cleansing agents,, insecticides and their preparation. The-products also are used as stabilizers, textile aids, constituents of certain greases,, metal ion precipitating agents, and in the preparation of ammonium soaps and', nitrile and amine products. Epoxy fatty-alcohols made by the described process; also may serve as plasticizers. It is important, according to appellant, to control the amount of splitting of the oxirane rings for while a small amount of splitting of the oxirane rings may be tolerated, if a substantial amount of splitting-of the oxirane rings occurs, the resulting-product or mixture is not useful for the-intended purpose.

A survey of the commercial uses for-the product discloses many areas in which the desideratum is a product which, can be made available in substantial' quantities and at commercially realistic-prices. In any chemical process time is an important factor which enters into-the cost of the product. Thus, to save.time in a process is one way to increase-the efficiency of a given chemical process-which in turn leads to increased production and lower costs.

Appellant has stated in his specification:

“Accordingly, it is an object of this disclosure to provide an improved commercially feasible method of producing epoxy salts, epoxy fatty acids and epoxy fatty alcohols from epoxy esters of aliphatic, unsaturat-ed, unconjugated fatty acids and. fatty alcohols.

“Another object of this disclosure-is-to provide an improved commer- • daily feasible method of producing-epoxy fatty acids from epoxy deriva- - fives of seed oils in a commercially-feasible manner.

“An additional object of this disclosure is to provide an improved i *247 method of economically producing •epoxy salts from epoxy esters of fatty acids on a commercially feasible basis by forming from epoxy fatty •esters the epoxy salts thereof in a .manner which would normally be expected to detrimentally break the oxirane.”

It is to be noted from these statements .and from the record as a whole that the (problem posed by the prior art at the time the present invention was made was how to reduce the reaction times without ■excessive splitting of the oxirane ring.

While I agree with the general proposition that many chemical reactions are speeded up as the temperatures of reaction are increased (and that to this extent appellant’s use of higher reaction ■temperatures than those of the prior art :may be said to be obvious), I am unable to so categorize the process “as a whole.” A British patent, No. 854,670, incorporated in the record before this court, indicates that the use of high temperatures would result in a loss of oxirane rings by reason of their splitting. Such splitting in turn results in the formation •of undesirable side products. Thus, it seems to me that appellant’s invention '“as a whole” clearly differs from the prior art teachings in an unobvious manner.

It is interesting here that the prior art ■upon which the Patent Office relies are abstracts reporting laboratory experiments which, over a period of some 25 years, still had apparently not resulted in the production of anything but a scientific curiosity. As stated by the majority, “The only pertinent disclosures of reaction conditions in the references are "the statement of Pigulevskii et al. (II) that saponification was carried out at room temperature, for 24 hours, using •0.5 normal alcoholic potassium hydroxide, and the statement of Boeseken et al. that .saponification was carried out at ‘low temperature.’ ” The date of Pigulevskii .et al. (I) is 1931; the date of Pigulevskii et al. (II) is 1955. The date of the Boeseken et al. abstract is 1929.

While I agree with the majority opinion that the prior art does not discuss the breaking of the oxirane ring under the reaction conditions there specified, it is appellant’s position, as shown by the British patent and which has not been factually rebutted by the examiner, that oxirane values are lost by excessive splitting of the oxirane rings and that such splitting would be the expected result of increasing the reaction temperatures to reduce the time of the process.

I think, therefore, that the present case is one to which we should apply our comments in In re Sporck, 301 F.2d 686 , 49 CCPA 1039, that:

“Obviousness is a legal conclusion which we are required to draw from facts appearing in the record or of which judicial notice may be taken. * * * Here, neither the record nor the facts of which we are able to take judicial notice supplies the factual data necessary to support the legal conclusion of obviousness of the invention at the time it was made. We are unwilling to substitute speculation and hindsight appraisal of the prior art for such factual data. For this reason we think there is a doubt as to the factual basis supporting the conclusion of the board of appeals that the invention would have been obvious to one of ordinary skill in the art of metal spinning. Under these circumstances, the doubt should be resolved in favor of the applicant. (Citing two cases).”

If, therefore, we consider appellant’s “invention as a whole,” we see that it is more than a mere routine juggling of reaction conditions to achieve optimum results. As such, I think the differences between the prior art and the invention claimed in the appealed claims would not have been obvious to one of ordinary skill in this art. I would therefore reverse the board’s decision.