In cases where the prior art discloses a process for accomplishing something and that process consists of a certain number of steps, it might be possible to rearrange the process so that the steps are performed in a different order. Such a variation from the prior ar twill be novel if the applicant claims the steps in an order different from the order in the prior art. However, the outcome with respect to prima facie obviousness might conclude in a less auspicious manner for the patent applicant. While our next case, In re Burhans, is not exactly a chemistry case, it is rather close as it is often said that practicing chemistry is like baking bread. Assuming the patentability of chemical processes and bread making are also analogous, let’s extend the metaphor a bit further by considering In re Burhans for what we might learn about changing the sequence of steps in a process.
The decision of In re Burhans came as the result of an appeal from a final rejection at the USPTO over a number of rejected claims. Claim 4, shown below, will be considered illustrative for our purpose.Claim 4. The method of making genuine whole wheat flour which consists in separating the germs from the wheat, manufacturing flour from the remaining constituents of the wheat, aging the flour, incorporating there into finely divided non rancid wheat germ constituents, and thereafter impregnating the flour with carbon dioxide.
In consideration of the appealed claim(s), the Court cited several prior art references.
In particular, one of the cited references described the treatment of freshly prepared flour with carbon dioxide as a method of preventing its becoming rancid.
According to the reference, the addition of CO2 “renders fresh flour fit for immediate use and prevents flour at a far advanced age from decomposition.” The Court added that it was conventional and known in the art to age the flour before using it. The same reference as well as others cited described the separation of the germs from wheat,milling the wheat to flour, and then adding back the germ. Putting these together one can see that the main innovation in the claimed invention is that the CO2 was added after aging versus before aging, as described in the prior art reference. The patent applicant argued that the references taken singly or together did not suggest his characteristic steps for making bread. Without much discussion, the court found applicant’s argument without merit and rejected the claimed invention for obviousness.
In the Court’s words: “There is no merit in the point here in the absence of any proof in the record that the order of performing the steps produces any new and unexpected results.”
In chemical processes, it is not only the order of steps that might be considered but many other factors as well. For example, chemical ingredients might be mixed together at different rates such that the ingredient could be added at once as in batches or continuously over a given period of time. By now you likely can guess the outcome of any such attempt to overcome the prior art by making such a change, but let’s review a case, In re Dilnot, where just such a situation was encountered. Inre Dilnotarose as the result of an appeal from a final rejection at the USPTO over a number of rejected claims. The case concerned methods and compositions related to the production of cement. Only one of the claims is relevant to the present discussion and that claim is shown below.
The method of producing a cellular cementitious structure consisting of the steps of, preparing a slurry of cementitious material, generating a stable air foam, continuously introducing said foam into said slurry, and intimately mixing said foam with said slurry as said foam is introduced to produce a substantially uniform dispersion of said foam in said slurry, introducing said mixed foam and slurry into a form of desired configuration,and allowing said mixture to set and harden (emphasis added).
The Court affirmed the rejection of this claim over a prior art description of a similar process, quoting from the USPTO’s rejection:
Jahjah [the prior art reference cited by the USPTO] combines the preformed foam into various cement and concrete mixtures wherein known aggregates may optionally be in corporated. The foam is introduced from a reservoir into a concrete mixer containing the cement mix, and, in our opinion, it would be obvious to a technician having ordinary skill in the art to add the foam gradually to the cement mix while it was being mixed,since, as pointed out by the Examiner, conventional cement mixers operate in this fashion.
Further, Jahjah obtains uniform dispersion of the foam and produces a multi cellular cementitious product not differentiated in this record from that obtained by appellant.
In a subsequent rejection of the same claim upon reconsideration, the Court further provided that the “Appellant apparently relies upon continuous operation to differentiate over the Jahjah batch process. It is, however, well within the expected skill of the technician to operate a process continuously.” So from the case of In re Dilnot, we learn that changing from a batch addition of an ingredient to a continuous addition will probably not be sufficient to escape a prima facie obviousness rejection.Of course this does not mean such a process is not patentable, only that unexpected results relative to the prior art batch addition would need to be demonstrated.
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