The opinion
SMITH, Judge
(dissenting).
The invention with which we are here concerned is a detailed, limited improvement in the highly technical art of polymerizing certain designated materials for producing fire-retardant compositions. As stated in the specification:
* * * More particularly, it relates to polymerizable compositions comprising polyesters of polymerizable compositions comprising polyesters of polyhyric alcohols and polycarboxylie acid anhydrides, at least a portion of which is tetrabromophthalic acid anhydride [TBPAA] that gives the products produced therefrom said fire-retardant characteristics; and to processes for the preparation of such polymerizable compositions.
The specification also provides the further background information that:
The production of flame-retardant polyester resins is of great commercial importance. The expanded use of polyester resins in the coating composition field, which includes increasing application to wall members, structural panels, pipes, electrical contacts and the like, requires that the coatings be resistant to fire and heat deterioration.
Specifically, appellants do not assert nor claim anything but a very specific improvement relating to the critical limits of 5 ppm of the ferric iron impurity in the TBPAA which they assert permits the incorporation of TBPAA in a polyester. The specification characterizes the resultant polyester resins as having “remarkable flame-retardancy when cured.” Appellants],-position is supported in the specification by detailed and comparative examples of the reactions involved and by test data set forth therein as resulting from controlled experiments which in turn are fully described.
The record herein seems to me to support appellants fully in the following statement in their brief:
Appellants admit that the art (.as represented by the Lundberg, Phillips et al, and Wismer et al references) not only knew that tetrabromophthalic acid anhydride (TBPAA) could be used to prepare polyesters, but was aware that TBPAA could be used in the preparation of polyesters with fire-retardant properties.
A practical industrial problem existed, however, in the fact that there was difficulty in preparing polyesters from commercially available TBPAA.
Appellants, thereupon, directed their efforts to solving this industrial problem and made a triple-faceted discovery :
1. The cause of the difficulty in preparing polyesters with TBPAA resides in the presence of ferric iron. The following statement made by this Court in In re Antonson, [ 272 F.2d 948 ] 47 CCPA 741, 124 U.S.P.Q. 132 , 133, is apropos: “ * * * the inventive act which entitles an applicant to a patent resides as well in the discovery of the source of trouble as in the application of the remedy.” citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 67 , [ 43 S.Ct. 322 , 67 L.Ed. 523 .]
2. The remedy resides in utilizing TBPAA with no more than 5 ppm (parts per million) of ferric iron associated therewith. The criticality of 5 parts per million is illustrated in Example V of the specification * *.
*674 S. An unexpected advantage of using TBPAA associated with no more than 5 parts per million of ferric iron is that fire-retardant properties far in excess of expectation are achieved. Table I * * * clearly shows the unexpected advantage with respect to fire-retardant properties achieved by the use of TBPAA associated with a limited amount of ferric iron in relation to the use of TC1PAA (tetrachlorophthalic acid anhydride), PAA (phthalic acid anhydride), and HC1 NAA referred to by the Examiner as “chlorendic acid”. Note particularly the column “% Consumed”. * * *
With the foregoing as a background, the issue which the majority resolves against appellants is that of obviousness of the claimed invention under 35 U.S.C. § 103 .
The examiner’s analysis of appellants’ invention and the prior art was adopted by the board in affirming the rejection and this in turn underlies the majority’s affirmance of the board’s decision. It seems to me, however, that the examiner’s analysis substitutes his view, by a process of hindsight reconstruction, for what Congress has provided in 35 U.S.C. § 103 as the standard by which to determine what would have been obvious to one of ordinary skill in this art at the time of appellants’ invention.
Appellants readily admit that of the art cited by the examiner, the Lundberg, Phillips, and Wismer patents are representative of the prior art on which appellants’ improvement is based. Appellants point out, however, that in addition to not recognizing the esterification problem faced by industry or its solution, not one of these references recognizes the special significance of limiting the iron impurity of TBPAA. Lundberg does not mention TBPAA and Phillips and Wismer merely disclose TBPAA as “one among many” of the materials which may be used.
The examiner in his answer ignored the precise limitations in appellants’ disclosure and claims and incompletely described appellants’ invention as follows:
The invention relates to a process of preparing fire retardant polyester resins from a glycol, a dicarboxylic acid which may be a-3-ethylenically unsaturated, and at least 10 mol per cent of tetrabromophthalic anhydride of a specific ferric iron content. The polyesters, when unsaturated, may be combined with unsaturated monómers and cured.
It should be noted that the examiner at this point apparently did not consider what appellants have asserted to be * the critical limitation in their discovery, i. e., that producing the product depends on the incorporation in the product of the minimal stated amount of TBPAA having the ferric iron impurity in the TBPAA not above 5 ppm.
Thus, appellants’ “invention as a whole,” which section 103 requires us to consider in arriving at a determination of the issue of obviousness, has a twofold aspect: 1) an appreciation of a problem which, on the record, was unknown to the prior art, and 2) its solution. Both aspects of the invention are discussed in commendable detail in appellants’ specification. The error of the examiner, the board, and the majority, traces back to what now seems to have been an incomplete statement in the examiner’s Answer as to what appellants have claimed as their invention “as a whole.”
The Supreme Court has cautioned against such an analysis of a patent specification and claims. Thus, in United States v. Adams, 383 U.S. 39, 48-49 , 86 S.Ct. 708, 713 , 15 L.Ed.2d 572 (1966) the court stated:
* * * While the claims of a patent limit the invention, and specifications cannot be utilized to expand the patent monopoly * * * it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention * * *. [Citations omitted.]
Thus, under Adams , the emphasis is to be placed on ascertaining the invention. “Invention” under the Adams de *675 cisión is first a mental act on the part of the inventor, i. e., an understanding of the problem and the conception of a solution for it. The embodiment of the invention as set forth in the specification is evidence pertinent to a consideration of the patentability of that which is disclosed. A specification cannot be ignored in determining what the invention is. The failure of the examiner and the board to consider the appellants’ specification in ascertaining the invention seems to me to warrant reversal. I have set forth in some detail what I consider to be the salient points of appellants’ specification which bear on this consideration. This study makes it clear that appellants’ invention lies in the claimed relatively narrow advance over the prior art. These “critical” limitations on appellants’ invention with respect to the permissible iron content were ignored by the examiner, the board, and the majority.
To the extent the examiner evaluated the limitation in the claims restricting the amount of the ferric iron impurity in the TBPAA used in the reaction, he related it to the purity of one of the reactants and stated:
* * * Applicants rely on the specified ferric iron impurity content of the tetrabromophthalic anhydride as a distinction over the method and product of Lundberg. However, it is not seen that any impurity need be presumed in the reactants, specifically the bromophthalic reactant of the reference. It is considered that the choice or use of a reactant in either a purified or a crude state is within the scope of the patent as well as a matter of choice within the skill of the art. Further, it is presumed that purified reactants would be those of choice unless for some reason a crude reactant was in some respect more desirable. It would appear that a purified reactant would be the more desirable and thus the one of choice and thus the one used in Lundberg. * * *
The issue of obviousness thus seems to have been resolved against appellants in the first instance on the basis of an unsupported presumption thus indulged by the examiner. The board stated:
* ' * * We therefore agree with the Examiner that a pure or iron-free reactant would normally be employed, thus rendering obvious appellants’ contribution.
We also note there to be no evidence in this record that all commercially available tetrabromophthalic anhydride would necessarily contain ferric ion [sic] in a proportion above the 5 ppm. which appellants consider to be the operative limit of their contribution. The use of commercially available tetrabromophthalic anhydride having a low iron content is equally obvious in the polyesterifications of the prior art as the high iron content urged by appellants.
Here, as in Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 , 43 S.Ct. 322 , 67 L.Ed. 523 (1923), it was the discovery of the source of a problem, not before known, and the discovery of a remedy for which appellants are entitled to the grant of a patent. When so considered, the invention here was not the mere use of a “pure” reactant to remedy an asserted source of difficulty. It lies rather in the perception of control of the amounts of the material which inhibited the esterification reaction.
Whether the reactants are “pure,” or “impure,” does not meet the issue. “Purity,” at best, is a relative term lacking exact meaning except from the context in which it is used. As such, the general use of the term by the majority creates semantic difficulties. What, for example, is meant? “How pure is pure ?” On this record, the use of “pure” reactants in the art would not alone make the claimed invention obvious under the conditions of section 103, for even a “pure” TBPAA might contain ferric iron in an amount in excess of 5 ppm.
Thus, in the second instance, the rejection is necessarily bottomed on what amounts to a lack of factual evidence as to criticality of the claimed limits. *676 The position that such limits are indeed critical as asserted by appellants remains unchallenged except for the examiner’s unsupported “presumption” to the contrary.
Moreover, it is noted neither the examiner nor the board challenged applicants’ assertions that a “practical industrial problem existed.” Neither the examiner nor the board proffered anything controverting applicants’ statement that “there was difficulty in preparing polyesters from commercially available TB PAA.”
“Invention,” as the term appears in the statute, means “invention or discovery.” ( 35 U.S.C. § 100 ). Thus, if, in fact, a problem existed in this art, appellants’ discovery of the causes of the problem coupled with their discovery of a solution to that problem constitutes an “invention,” which is patentable unless barred by specific provisions of the statute.
The record here consists of uncontroverted factual allegations made by appellants. Taking an unduly broad view of the tests of section 103, the examiner substituted for factual proofs, his unsupported speculation that pure reactants would be used in the method and product of Lundberg. Thus, he reasoned, and the board agreed, that since a pure or iron-free reactant was available, applicants’ invention was obvious. But if applicants’ “invention” uncontrovertibly resides in both the discovery of a cause of a problem and a discovery of the solution to that problem, the reasoning to support the rejection begs the question.
The majority refers to Examples II and V of appellants’ specification as not supporting appellants’ position. The entire specification, however, contains Examples I, III and IV which also require consideration. These examples, when considered along with Examples II and V, produce a quite different picture than that reflected in the majority opinion and which, it seems to me, clearly offsets the examiner’s “presumption.” Thus, in Example I, we find a disclosure of a method of purifying the TBPAA to make it “suitable for conversion into polyester resins which are characterized by a remarkable flame retardancy.” The purified TBPAA is disclosed as having but 2 ppm of ferric iron impurity. The examples then continue:
A mixture of 2.2 mol parts of diethylene glycol, 1.0 mol part of maleic acid anhydride and 1.0 mol part of tetrabromophthalic acid anhydride conditioned by treatment with methanol as described above, [which was conditioned by reduction of the ferric iron content] was heated rapidly to 170° in a slow stream of carbon dioxide. The mixture was agitated and heated at 170° until the evolution of water practically ceased and the acid number was 40. Thereafter, the mixture was cooled to 100° and 0.4 to 0.7 millimole part of hydroquinone and 3.2 mol parts of styrene were added. The mixture was agitated until homogeneous, after which it was cooled as rapidly as possible in an ice water bath.
In Example I, a further experiment was run and is described as follows:
Repetition of this experiment, in which an unconditioned tetrabromophthalic acid anhydride was used in place of the conditioned tetrabromophthalic acid anhydride, failed to give any polyester material. * * *
Example III describes the purification of TBPAA to reduce its ferric iron component from 8 ppm to 4 ppm. This purified material was used in the polymerization reaction described as follows:
A mixture of 49.9 parts of maleic acid anhydride, 232 parts of xylene-purified TBPAA and 117 parts of diethylene glycol was heated in an atmosphere of nitrogen to 175° C. The mixture was maintained at 175° C. to 180° C. for about 10 hours, at which time the acid number of the mass was 77.1. The mass was cooled to about 120° and 166.9 parts of styrene and a small quantity of hydroquinone were added. The mixture was cooled rapidly to ambient temperature.
*677 The mixture was copolymerized in the manner described in Example I (b) to yield solid resin of excellent fire-retardant properties.
Example IV describes another method of purifying the TBPAA to reduce its ferric iron content to 1.2 ppm. The TB PAA so purified was then used as follows:
A mixture of 49.9 parts of maleic acid anhydride, 232 parts of TBPAA purified by the sodation method described above, and 117 parts of diethylene glycol was heated in an atmosphere of nitrogen at 170° to 180° C. for 12 hours, at which time the acid number of the polyester was 70.6. The mass was cooled to 120°, and 166.9 parts of styrene and a small quantity of hydroquinone were added. The mixture was cooled rapidly to room temperature.
The resulting polyester mass was copolymerized as described in Example 11(b) to give a resin of excellent fire-retardant characteristics.
Appealed claims 1-5, 10, 11 are directed to appellants’ method while appealed claims 6, 7, are directed to “a polyester resin,” claim 8 to “a product resulting from the curing of the polyester resin claimed in claim 7,” and claim 12 to “a polyester composition.”
With respect to the method claims, I am of the view that appellants’ contentions have merit and should be sustained. The board found, and appellants admit, that the art was aware that TBPAA .could be used to prepare polyesters having fire-retardant properties. However, appellants allege that commercially available TBPAA is not suitable for the production of polyesters and that this difficulty is caused by the presence of ferric impurities in excess of 5 ppm in the TB PAA. Support for this allegation is seen in the specification, particularly in Example V of the application where it is shown that commercially obtained TB PAA, containing 34 ppm ferric iron, could not be used to produce a polyester. Even 8 ppm of ferric impurity hinders the esterification reaction to the extent that polyesters cannot be consistently produced therefrom. On the other hand, TBPAA containing 5 ppm of ferric impurity or less consistently produced polyesters which have excellent flame-retardant characteristics as shown in other examples in the application. From the foregoing I conclude that appellants have demonstrated the criticality in the esterification process of the claimed limits on the amounts of ferric impurities in the TBPAA. Therefore, the rejection of claims 1-5 and 9-11 should be reversed.
The board’s decision with respect to the method claims is that one skilled in the art would not be expected to employ an impure reactant and that there is no evidence in this record that all commercially available TBPAA would necessarily contain more than 5 ppm of ferric impurities. I find these contentions untenable. In the first place, I believe that one skilled in the art would not normally employ chemically pure reactants to produce resins for use in such relatively low cost consumer products as wall members, structural panels, pipe, electrical compacts and the like. It is to these items disclosed in appellants’ specification to which we are directed for the usefulness of the fire-retardant compositions with which appellants are concerned. The question simply stated is whether it would be obvious for one of ordinary skill in producing resins for such uses to employ chemically pure TB PAA in the polymerization reaction. Except for Example V of the application, the record discloses little as to the amount of ferric iron impurities present in commercially available TBPAA. The sample there described contained 34 ppm of ferric impurities. 1
*678 The thrust of the board’s decision apparently would require appellants to show that all commercially available TB PAA contains more than 5 ppm of ferric iron. There is no basis for such a requirement in the statute or in reason.
The board also relies on the O’Neill, Tate and Hoffmann references to support the proposition that the art is aware of the need for purifying various phthalic acids prior to their use in esterification. I find nothing in any of these references which makes the presently claimed invention obvious. There simply is no teaching of any relationship between the ferric impurities in TBPAA and its successful use in an esterification process to produce fire-retardant resins. The simple fact is none of the references suggests the appellants’ claimed critical ferric iron content of 5 ppm. The Hoffmann reference is relied on by the board as showing the removal of ferric impurities present in tetrachlorophthalic anhydride. However, it is clear that all Hoffmann in fact teaches is that iron chloride may be in the solution during the recrystallization of tetrachlorophthalic acid. This statement of a permissible procedure in the recrystallization of tetrachlorophthalic acid falls far short of establishing the obviousness under section 103 of appellants’ discovery that a ferric iron impurity in excess of 5 ppm in TBPAA would seriously hinder or completely stop esterification reactions in which TBPAA was involved.
Study of the O’Neill, Tate and Hoffmann references verifies the accuracy of the observations in appellants’ brief concerning these references that:
The O’Neill reference discloses a method for the purification of terephthalie acid. No mention is made of TBPAA or ferric iron and it is not understood how one of ordinary skill in the art would be taught the problem, the solution, or the special significance of TBPAA.
The Tate reference also discloses a method for the purification of terephthalic acid. Again, no mention is made of TBPAA or ferric iron. Tate speculates at column 2, lines 7 to 12, that “acidic or acid-forming impurities” are responsible for the production of undesirable esters, but he does not define “acidic or acid-forming impurities”, which cover a broad class of materials. Be that as it may, Tate obviously does not disclose or suggest the problem of esterifying TBPAA, the solution, and the special significance of TBPAA.
The sixth and last reference relied on by the Board is the Hoffmann patent. This patent discloses a method for the purification of tetrachlorophthalic acid and its anhydride. No mention is made of TBPAA. The ferric iron mentioned is obviously present because of the use of ferric chloride as a chlorination catalyst in the preparation of tetrachlorophthalic acid. TBPAA is generally not prepared in the same manner * * *. However, Hoffmann does not state that ferric iron is responsible for the difficulty in the formation of polyester, and, even if the suggestion is assumed, there is no teaching that a limited amount of ferric iron can be present. Furthermore, Hoffmann does not, in any way, suggest the special significance of TBPAA.
It is therefore apparent that none of the references, alone or in combination, suggest that polyester resins of remarkable flame retardancy can be prepared by utilizing TBPAA that has not above 5 parts per million of ferric iron associated therewith. The references relied on are not concerned with the problem of esterifying TBPAA, do not offer a solution, and are not aware of the special significance of TBPAA in the fire retardant field.
*679 Claims 6, 7, 8 and 12 while generally in the form of “product” claims contain references to the “reaction product” (cl. 6-8) of “glycol and a component of the group consisting of saturated diearboxylic acids and anhydrides” or to “a mixture of cross linking agents * * * resulting from condensation of about one mol of glycol with about one mol of dicarboxylic acid * * All of these claims contain the essential and critical limitation as to the ferric iron impurity in TBPAA not being above about 5 ppm. They thus embrace the essential elements of appellants’ invention and appear to be little more than a permissible alternative way to claim their invention which resulted from a “surprising discovery” of the effect of the ferric iron impurity in the reaction for producing the desired fire-retardant resin. I therefore find them to be properly allowable claims.
It but further begs the question to find TBPAA as a known material in the prior art. It is the control of the ferric iron impurity therein which appellants related to the problem of utilizing TBPAA in polymerization reactions to produce fire-retardant resins. There is no question but that the art totally fails to teach this concept. The process and the product produced are clearly novel in this art. Thus, the only issue is whether under the tests of section 103 they are obvious.
In referring to the requirements of section 103, the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 , 86 S.Ct. 684 , 15 L.Ed.2d 545 , (1966) stated:
* * * The emphasis on nonobviousness is one of inquiry, not quality and, as such, comports with the constitutional strictures.
While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. supra, at 155, 71 S.Ct. at 131, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or non-obviousness of the subject matter is determined. * * *
The present ex parte record is not as fully developed here as it should be to permit a more accurate determination of the present issue. The only evidence directly bearing on the existence of the problem, and its solution by appellants is found in their specification. The examiner has cited no art bearing directly on the issue, except as we ignore the “invention as a whole” requirement of section 103 and reconstruct the invention on a piecemeal hindsight basis. Even when this is done, the art totally fails to make obvious the critical limits of the ferric iron impurity claimed by appellants. To bridge this gap, the examiner “presumes” that one of ordinary skill in the art of manufacturing fire-retardant resins by the use of TBPAA would use chemically pure rather than commercially available TBPAA. Even here, he furnishes no “evidence” as to what would be obvious to one of ordinary skill in this art.
It seems clear to me that the intent of Congress expressed in the Patent Act of 1952 was to grant patents on an invention unless one of the statutory grounds for refusal was established. I do not consider the unsupported “presumption” of an examiner sufficient to establish obviousness under section 103 as interpreted by the Supreme Court in the Graham and Adams cases.
Judge Kirkpatrick’s concurring opinion states:
The difficulty with the appellants’ case now before us is the lack of ade *680 quate evidence to bring his application within the rule. There is nothing to show that the “problem” which the appellants claim to have solved is anything other than the perennial problem present in every industry, namely, how to improve the quality of the product or to make the process of manufacture more efficient. Certainly the mere fact that an applicant for a patent has succeeded in making an improvement in product or process is never of itself evidence of nonobviousness. It must appear that what he has done is not within the skill of the ordinary practitioner of the art. Here nothing has been offered to show that any problem other than the problem of how to improve the product and process existed.
As above pointed out, my disagreement is that I find in the specification “evidence,” which in my opinion is far more persuasive than the “presumption” on which the examiner based the rejection. Briefly, it seems to me that an applicant should not be required to produce more “evidence” than was here presented until the examiner has overcome the prima facie case of patentability which I find in the present specification. Only after a properly supported rejection has been made is the burden of further proof properly placed on an applicant. It is a fact of which judicial notice is properly taken that this court, as well as other courts, as in Adams and in Eibel, have found patents valid when directed to nothing more than improving the quality of a product or making the process of manufacture more efficient. The fallacy is that how one improves quality of a product or efficiency of a process frequently involves unobvious patentable improvements, and this is as it should be within the terms of 35 U.S. C. § 101 which specifically includes “any new and useful improvement” on processes, machines, manufactures or composition of matter.
I would, therefore, reverse the decision of the board.
. It is interesting to observe at this point that appellants’ specification states:
* * * Further, it has been stated that attempts to incorporate desirable flame-retardant properties into high polymer polyesters by use of chloro- and bromo- derivatives of phthalie an-hydride for use in surface coatings *678 have been either unsuccessful or economically unattractive (Kirk-Othmer, Encyclopedia of Chemical Technology, Volume 10, page 595 — Interscience Encyclopedia, Inc., 1953).