holding the claimed invention nonobvious in view of post-filing evidence of an unexpected property not disclosed in the specification, while noting that the evidence “[wa]s directed to that which ‘would inherently flow’ from what was originally disclosed”
How later courts described this case
- holding the claimed invention nonobvious in view of post-filing evidence of an unexpected property not disclosed in the specification, while noting that the evidence “[wa]s directed to that which ‘would inherently flow’ from what was originally disclosed”
- allowing an unexpected result to overcome an obviousness rejection where the improved result “ ‘inherently flow[ed]’ from what was originally disclosed [in the patent application]”
- reliance on an unexpected property not disclosed in the application may be entitled to weight if “directed to that which would inherently flow from what was originally disclosed”
Written by the judges who cited it.
The opinion
MARTIN, Judge
(dissenting).
The key question here is whether the improvement in efficiency, which I assume arguendo is shown by the affidavit, was to be expected. 1 The majority is of the view that it was not; I think it was expected from the teaching of Schulze et al. that:
* * * gas or vapor phase treating of normally gaseous hydrocarbons is satisfactory if provision is made in the size of the reagent bed to allow contact times corresponding to linear vapor velocities under five feet per minute. [Emphasis added]
The improved result alleged by appellant here is one of efficiency: i. e., a savings of time, or as Schulze et al. say, “contact times”. In my view, the above quoted passage of Schulze et al. teaches that one must adjust the size of the COS reagent bed so that the linear vapor velocity through it is not over 5 feet per minute. This is in contrast to the liquid phase requirement of .5 to 5 volumes of liquid propylene per hour per volume of reagent. Regardless of the exact figures that one of ordinary skill in the art could determine on the basis of the relationships explicitly taught by Schulze et al., it is clear that in going from say .5 volumes liquid propylene per hour per 1 volume of reagent to the volume of gas corresponding to the 15 volume of liquid at a rate such that the gas passes through a five foot long bed in no less than one minute, more reagent bed will be required. That means if the same amount of reagent, “1 liquid vol *878 ume” in the example above, is to be used, the times will be longer, and correspondingly the efficiency less.
Thus, while I do not view the exact efficiency alleged to be shown, 12 hrs. vs 1 hr., as being necessarily predictable, I do not think such absolute predictability to be required by the law, where con improvement in efficiency is to be expected from the teachings in the art.
I note also that there is no convincing argument that the resultant ppm value of COS left in the propylene is any improvement in view of the Karchmer et al. (gas process) data showing .2 ppm. The problem of removal of COS from propylene was recognized by Fleming.
Thus I would affirm.
. That is the key question as noted by the majority, and it is founded on the view that without a showing of improved re-suits, or if the results were to be expected the combination of references would render the claimed process obvious within the meaning of 35 U.S.C. § 103 .