DIANE M. DILLON, PETITIONER V. HARRY F. MANBECK, JR. COMMISSIONER
OF PATENTS AND TRADEMARKS

   No. 90-1264

   In The Supreme Court Of The United States

   October Term, 1990

   On Petition For A Writ Of Certiorari To The United States Court Of
Appeals For The Federal Circuit

   Brief For The Respondent In Opposition

                           TABLE OF CONTENTS

   Questions Presented
   Opinions below
   Jurisdiction
   Statement
   Argument
   Conclusion

                            OPINIONS BELOW

   The opinion of the court of appeals sitting en banc, Pet. App.
1a-79a, is reported at 919 F.2d 688.  The opinion of the court of
appeals panel is reported at 892 F.2d 1554.  The decision of the Board
of Patent Appeals and Interferences (Board) of the Patent and
Trademark Office (PTO), Pet. App. 80a-91a, is not yet reported.

                             JURISDICTION

   The judgment of the en banc court of appeals was entered on
November 9, 1990.  Pet. App. 92a.  The petition for a writ of
certiorari was filed on February 7, 1991.  The jurisdiction of this
Court is invoked under 28 U.S.C. 1254(1).

                          QUESTIONS PRESENTED

   1. Whether a patent examiner establishes a prima facie case that a
new composition is "obvious" (and therefore non-patentable) for
purposes of 35 U.S.C. 103 when the prior art suggests significant
practical reasons for making and using the composition, but does not
suggest that the composition also would solve a different problem
whose solution is recognized by the applicant.

   2. Whether the court of appeals erred in concluding that petitioner
should be charged with notice of the learning contained in certain
preexisting patents.

                               STATEMENT

   1. Petitioner discovered that she could reduce the particulate
emissions (commonly known as soot) that result from the burning or
combustion of hydrocarbon fuels by adding to the fuel certain
compounds called tri-orthoesters and tetra-orthoesters.  One group of
preexisting patents (the Sweeney patents) showed that the addition of
tri-orthoesters to fluids (both hydrocarbon fuels and nonhydrocarbon
fluids) helped to purify the fluids by removing water.  A second group
of preexisting patents (the Elliot and Houk patents) suggested that
tetra-orthoesters were as effective as tri-orthoesters at removing
water from nonhydrocarbon fluids.  Pet. App. 2a-4a.  Because the
Sweeney patents already had described the addition of tri-orthoesters
to hydrocarbon fuels, petitioner sought a patent only for application
of her discovery by means of tetra-orthoesters.

   2. Both the patent examiner and the Board refused a patent on the
ground that the invention was obvious from the prior art and,
therefore, could not be patented under 35 U.S.C. 103.  Pet. App.
2a-3a, 80a-81a.  Section 103 provides, in pertinent part:

         Conditions for patentablility;  non-obvious subject matter.

         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 the differences between the subject matter
      sought to be patented and the prior art are such that the
      subject matter as a whole would have been obvious at the time
      the invention was made to a person having ordinary skill in the
      art to which said subject matter pertains.  * * *

   In the Board's opinion, the prior art teaching that both tri- and
tetra-orthoesters were useful for removing water from nonhydrocarbon
fluids (the Elliott and Houk patents), coupled with the teaching that
tri-orthoesters were useful when added to hydrocarbon fuels (the
Sweeney patents), rendered obvious the use of tetra-orthoesters as an
additive to hydrocarbon fuels.  Pet. App. 85a-86a.  As the Board
explained (id. at 86a):

      Considering the very close structural and chemical similarity
      between (petitioner's) orthoesters * * * and the * * *
      orthoesters (described in the preexisting patents), and the fact
      that the (preexisting) orthoesters were known in the art to be
      useful as additives for hydrocarbon fuels, such as diesel fuel,
      there is a reasonable expectation that the prior art
      compositions will have properties similar to the claim
      compositions.

   The Board also rejected petitioner's argument that the Elliott and
Houk patents (which suggested that tetra-orthoesters would produce
results similar to those produced by the tri-orthoesters described in
the Sweeney patents) were so unanalogous that they could not fairly be
considered prior art:  "(T)here is * * * abundant suggestion and
incentive expressed in the references for using (tetra-)orthoesters;
* * * e.g., the close structural and chemical similarity of these and
Sweeney's orthoesters." Pet. App. 87a.

   Finally, the Board rejected petitioner's claim that she
nevertheless was entitled to a patent because her purpose in adding
the tetra-orthoester was different from that of the prior art.  The
Board offered its legal conclusion that differences between
petitioner's and the prior art's motivation for adding a component to
the composition will not alone render the composition unobvious.  "The
mere recitation of a newly discovered function inherently possessed by
things and processes in the prior art does not cause claims drawn
thereto to distinguish over that prior art.  Appellant cannot remove
from the public domain via a patent that which is inherently taught by
the prior art, i.e., the use of orthoesters as additives to
hydrocarbon fuels." Pet. App. 88a (emphasis added).

   This left only the possibility that petitioner's composition
offered some unexpected superior property not contained in the
compositions described in the prior art.  The Board rejected this
claim because "the present record is devoid of any convincing
objective evidence supporting such a conclusion." Pet. App. 90a.

   3. Petitioner appealed the PTO's final decision to the Court of
Appeals for the Federal Circuit pursuant to 28 U.S.C. 1295(a)(4)(A)
and 35 U.S.C. 141.  A divided panel of the court of appeals reversed,
Judge Archer dissenting.  892 F.2d 1554 (1989).  The majority
concluded that a new composition is not obvious, within the meaning of
Section 103, unless there is some suggestion or expectation in the
prior art that the new composition will have the same or a similar
utility as that discovered by the applicant.  892 F.2d at 1560.  The
majority held that petitioner's compositions and methods of using
those compositions were unobvious because the prior art did not
suggest that a combination of hydrocarbon fuel and tetra-orthoesters
would "have the properties found by the applicant." Id. at 1565.

   4. On rehearing, the en banc court of appeals vacated the panel's
decision and affirmed the PTO's refusal to grant the patent. Pet. App.
 1a.  The principal holding of the en banc court was that

      structural similarity between claimed and prior art subject
      matter proved by combining references or otherwise, where the
      prior art gives reason or motivation to make the claimed
      compositions, creates a prima facie case of obviousness, and * *
      * the burden (and opportunity) then falls on an applicant to
      rebut that prima facie case.  * * *

Pet. App. 7a.  In particular, the court concluded that the examiner
can establish a prima facie case without showing that there is a
"suggestion in or expectation from the prior art that the claimed
compound or composition will have the same or a similar utility as one
newly discovered by applicant." Id. at 8a.  /1/ The court went on to
explain that the prima facie case can be rebutted in two ways, first,
by evidence that there was no incentive under the prior art to make
the new composition, and, second, by evidence that the new composition
has some superior property not inherently possessed by the preexisting
compositions.  Id. at 9a.

   Applying this rule to the facts of this case, the court ruled that
the examiner established a prima facie case of obviousness and that
petitioner failed to rebut it.  Pet. App. 9a.  The court found that
the prior art "provided the motivation to make the claimed
compositions in the expectation that they would have similar
properties," and that petitioner "did not present any showing of data
to the effect that her compositions had properties not possessed by
the prior art compositions or that they possessed them to an
unexpectedly greater degree." Ibid.

   The court also rejected petitioner's contention that the Elliott
patent was so non-analogous that it could not fairly be considered
part of the prior art.  The court noted that anyone concerned with
fuel oils clearly is chargeable with knowledge of the principal
Sweeney patent, and thus chargeable with knowledge of all other
references to the tri-orthoesters described there, including the
Elliott patent. Pet.  App. 10a-11a.

   Judges Newman, Cowen, and Mayer dissented because of their
disagreement with the majority's standard for establishing a prima
facie case.  Pet. App. 23a-79a.  In the dissent's view, a prima facie
case of obviousness had not been established "(s)ince there is no
suggestion in the prior art references, alone or in combination, of
the particulate-reducing property and use discovered by (petitioner)
for her new compositions." Id. at 79a.

                               ARGUMENT

   The decision of the court of appeals reflects the considered
judgment of the court to which Congress has given exclusive
jurisdiction over patent appeals;  accordingly there is no prospect
for a conflict with the decisions of any other court of appeals.
Moreover, the decision is correct, does not conflict with any decision
of this Court, and presents no question warranting this Court's
review.

   1. Strangely enough, the petition offers no argument, and only a
passing challenge, to the principal question considered in the
detailed opinions of the en banc court below:  whether the patent
examiner establishes a prima facie case that a composition is obvious
by showing motivation to create the composition in the prior art, even
if the prior art would have suggested creating the composition for a
reason entirely separate from the problem faced by the inventor at
hand.  See Pet. 23.

   a. Judging from the length and vigor of the opinions below, it
might seem that this question is important to administration of the
patent laws.  Nevertheless, a fair consideration of the context of the
issue suggests that the actual area of disagreement is quite narrow.
It is common ground that no patent can be issued to an inventor for a
preexisting composition -- however useful or surprising the discovery
may be -- because this would "remove existent knowledge from the
public domain, or * * * restrict free access to materials already
available." Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 146 (1989) (quoting Graham v. John Deer Co., 383 U.S. 1, 6
(1966));  see also 35 U.S.C. 101 (defining patentable subject matter
to include only "any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof").
/2/ Thus, petitioner's discovery that it was useful to add
tri-orthoesters to gasoline is not patentable, because this
composition was duplicated by the Sweeney patents;  it is of no import
that Sweeney did this to reduce water contamination in the fuel and
that petitioner did this to reduce pollution.

   It also is common ground that, even if the composition in question
had never before existed, an inventor could not secure a patent if at
the time of the invention the composition would have been obvious in
light of the prior art.  35 U.S.C. 103.

   The question here falls in the narrow gap between those two rules:
can an inventor secure a patent for a composition, never before
created, if the prior art did not address the problem before the
inventor but did suggest an obvious reason to make the composition to
solve a problem not considered by the inventor.  The lower court held
only that such facts set forth a prima facie case that the claimed
composition is obvious and thus nonpatentable.  Although this may
resolve a substantial question of patent procedure, we submit that it
is difficult to establish the true breadth of this holding at this
time, because this particular case has only described the steps
necessary to establish a prima facie case.  Until the Federal Circuit
applies this rule in subsequent cases in which inventors attempt to
rebut the prima facie case, /3/ this Court could not form a clear
opinion as the the exact requirements the Federal Circuit will apply
to applications for patents in this area.  This alone is adequate
reason why the question does not merit the attention of the Court at
this time.

   b. Petitioner also seems to argue that the language of 35 U.S.C.
103 is inconsistent with the decision below.  /4/ That Section
provides that a patent cannot be obtained if "the subject matter as a
whole would have been obvious" in light of the prior art.  The court
of appeals' decision in substance assumes that the phrase "subject
matter as a whole" refers to the composition being patented.  For
petitioner's claim to be correct, the phrase "subject matter as a
whole" must mean "the composition and its beneficial properties
discovered by the Applicant." The court of appeals' reading seems more
persuasive, because it is consistent with the teaching of Graham,
refered to above, that patents cover objects, not properties;  the
subject matter of a patent cannot be the properties of an object, but
only the object itself.  Cf. O'Reilly v. Morse, 56 U.S. (15 How.) 62,
112-114 (1854) (affirming a patent for invention of the telegraph, but
refusing to permit a patent for the scientific principle that operated
it).  In sum, although the language may not resolve this problem
indubitably, it certainly weighs in favor of the decision of the court
of appeals.

   c. The decision of the court of appeals on this point is consistent
with this Court's precedents.  As the petition recognizes, Pet. 12,
the principal case on application of Section 103 is Graham.  But a
careful reading of the relevant passages in Graham reveals -- at least
with respect to the dispute involved here -- little more than a
restatement of the statute.  See 383 U.S. at 17-19.  Petitioner has
cited nothing from Graham, and there is nothing in Graham, that
conflicts with the decision below.

   2. The principal argument in the petition addresses a point only
breifly discussed in the opinions below:  whether it was fair to
charge petitioner with knowledge of the Elliott patent, which suggests
that tri-orthoesters and tetra-orthoesters have similar properties.
Pet.  App. 14-15.  This question is extremely narrow and not likely to
produce any rule of general application.

   In substance, petitioner argues that, because she was studing
hydrocarbon fuels, she cannot be charged with knowledge of patents
(like the Elliott patent) related to nonhydrocarbon flunds.  In the
language of the statute (Section 103), she contends that the
nonhydrocarbon patents are not "obvious * * * to a person having
ordinary skill in the art to which (the) subject matter pertains"
because knowledge related to nonhydrocarbon fluids is not part of the
art to which her subject matter pertains.  See Pet. 15, 17.  But this
question presents nothing more than a fact-specific issue as to what
types of knowledge are within the ordinary skill of a person
performing research in this particular area.  /5/

   Petitioner attempts to broaden the question by suggesting that the
lower courts have expanded Section 103 unduly by adopting a blanket
rule that all literature related to any chemical is chargeable to a
person having ordinary skill in any endeavor related to that chemical.
 In the first instance, it is unlikely that such a rule would present
an issue of sufficient significance to merit attention by the Court.
But in any event this is not a fair reading of the opinions below.
Both the court of appeals, Pet. App. 11a, and the Board, Pet. App.
87a, rely specifically on the particular facts disclosed by the
relevant patents;  there is no basis for drawing any broad holding
from their discussions on this point.  In sum, there is nothing here
beyond a fact-specific conclusion that a person of ordinary skill
familiar with the Sweeney patents would be familiar with other patents
discussing use of the same process in closely-related chemicals.  In
light of the strikingly close relation between the chemicals in
question and in light of the similarity between the areas of research
(both of which use substantially identical chemicals to improve the
characteristics of fluids used in automobils), the resolution of this
question by the court of appeals does not warrant review by this
Court.

                              CONCLUSION

   The petition for a writ of certiorari should be denied.

   Respectfully submitted.

   KENNETH W. STARR

      Solicitor General

   STUART M. GERSON

      Assistant Attorney General

   MICHAEL JAY SINGER

   JOHN C. HOYLE

      Attorneys

   FRED E. MCKELVEY

      Solicitor Patent and Trademark Office

   APRIL 1991

   /1/ On this point, the en banc court specifically overruled an
earlier panel decision in In re Wright, 848 F.2d 1216 (Fed. Cir.
1988).  Pet. App. 8a.

   /2/ For a general discussion of this point, see Bonito Boats, 489
U.  S. at 146-149.

   /3/ As both the court of appeals and the board noted, petitioner
made no attempt to rebut the prima facie case.  Pet. App. 9a, 90a-91a.

   /4/ Although much -- if not all -- of this discussion appears to
relate to the second question presented, it is useful at this point to
discuss the guidance the statute offers on the first question.

   /5/ Petitioner's oblique reliance (Pet. 21) on Potts v. Creager,
155 U.S. 597 (1895), does not advance her cause.  In Potts, it was
apparent that some inventive work would have to be applied to the
prior art to make it useful in the problem for which a patent was
sought.  See id.  at 602-603.  In this case, by contrast, the prior
art strongly suggested manufacture of the precise composition
petitioner seeks to patent.  Moreover, nothing in Potts suggests that
the Elliott patents were not so closely related to petitioner's work
as to be part of the prior art.  On this point, petitioner's repeated
protestations that the court of appeals failed to recognize that
Section 103 commands a focus on the perspective of the inventor, see
Pet. 14-18, are beside the point.  It is clear that the focus is on
what is obvious to one involved in the inventor's area of study;  the
question, rather, is how broadly that area should be defined.