In Re Diane M. Dillon

Diane M. Dillon, assignor to Union Oil Company of California, appeals the November 25, 1987, decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO), Appeal No. 87-0944, rejecting claims 2-14, 16-22, and 24-37, all the remaining claims of patent application Serial No. 671,570 entitled "Hydrocarbon Fuel Composition." We affirm the rejection of all of the claims.1

Dillon's patent application describes and claims her discovery that the inclusion of certain tetra-orthoester compounds in hydrocarbon fuel compositions will reduce the emission of solid particulates (i.e., soot) during combustion of the fuel. In this appeal Dillon asserts the patentability of claims to hydrocarbon fuel compositions containing these tetra-orthoesters, and to the method of reducing particulate emissions during combustion by combining these esters with the fuel before combustion.

2. A composition comprising: a hydrocarbon fuel; and a sufficient amount of at least one orthoester so as to reduce the particulate emissions from the combustion of the hydrocarbon fuel, wherein the orthoester is of the formula:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

wherein R5 , R6 , R7 , and R8 , are the same or different monovalent organic radical comprising 1 to about 20 carbon atoms.

24. A method of reducing the particulate emissions from the combustion of a hydrocarbon fuel comprising combusting a mixture of the hydrocarbon fuel and a sufficient amount of at least one orthoester so as to reduce the particulate emissions, wherein the orthoester is of the formula:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

wherein R5 , R6 , R7 , and R8 , are the same or different monovalent organic radical comprising 1 to about 20 carbon atoms.

The other claims contain additional limitations and thus are narrower in scope.

The tetra-orthoesters are a known class of chemical compounds. It is undisputed that their combination with hydrocarbon fuel, for any purpose, is not shown in the prior art, and that their use to reduce particulate emissions from combustion of hydrocarbon fuel is not shown or suggested in the prior art.

The Board held all of the claims to be unpatentable on the ground of obviousness, 35 U.S.C. Sec. 103, in view of certain primary and secondary references. As primary references the Board relied on two Sweeney U.S. patents, 4,390,417 ('417) and 4,395,267 ('267). Sweeney '417 describes hydrocarbon fuel compositions containing specified chemical compounds, viz., ketals, acetals, and tri-orthoesters,2 used for "dewatering" the fuels, particularly diesel oil. Sweeney '267 describes three-component compositions of hydrocarbon fuels heavier than gasoline, immiscible alcohols, and tri-orthoesters, wherein the tri-orthoesters serve as cosolvents to prevent phase separation between fuel and alcohol. The Board explicitly found that the Sweeney patents do not teach the use of the tetra-orthoesters recited in appellant's claims.

The Board cited Elliott U.S. Patent 3,903,006 and certain other patents, including Howk U.S. Patent 2,840,613, as secondary references. Elliott describes tri-orthoesters and tetra-orthoesters for use as water scavengers in hydraulic (non-hydrocarbon) fluids. The Board stated that the Elliott reference shows equivalence between tetra-orthoesters and tri-orthoesters, and that "it is clear from the combined teachings of these references ... that [Dillon's tetra-orthoesters] would operate to remove water from non-aqueous liquids by the same mechanism as the orthoesters of Sweeney."

The Board stated that there was a "reasonable expectation" that the tri- and tetra-orthoester fuel compositions would have similar properties, based on "close structural and chemical similarity" between the tri- and tetra-orthoesters and the fact that both the prior art and Dillon use these compounds as "fuel additives." The Commissioner argues on appeal that the claimed compositions and method "would have been prima facie obvious from combined teachings of the references." On this reasoning, the Board held that unless Dillon showed some unexpected advantage or superiority of her claimed tetra-orthoester fuel compositions as compared with tri-orthoester fuel compositions, Dillon's new compositions as well as her claimed method of reducing particulate emissions are unpatentable for obviousness. It found that no such showing was made.

The issue before this court is whether the Board erred in rejecting as obvious under 35 U.S.C. Sec. 103 claims to Dillon's new compositions and to the new method of reducing particulate emissions, when the additives in the new compositions are structurally similar to additives in known compositions, having a different use, but the new method of reducing particulate emissions is neither taught nor suggested by the prior art.The Broad Composition Claims

Claim 2, the broadest composition claim, comprises a hydrocarbon fuel and an amount of tetra-orthoester sufficient to reduce the particulate emissions from the combustion of the hydrocarbon fuel. The other composition claims contain various limitations including a minimum amount of emission reduction to be achieved (claim 3), percentages of ester in the fuel (claims 4, 5, 16, 20, 21), use of different esters (claims 6-10, 17-19), use of different fuels (claims 11-14, 22), and the requirement that the composition be essentially free of alcohol (claims 36, 37).

The Board stated in its opinion that, to the extent that appellant had not chosen to separately argue the patentability of the appealed claims, "they stand or fall together," citing In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed.Cir.1983). We agree with the Board except as noted briefly below. It is not the practice of this court to review claims that an applicant has not separately argued at the Board level, because, inter alia, we lack the benefit of the Board's reasoned decision on the separate patentability of those claims. Id. at 1376, 217 USPQ at 1096; In re Herbert, 461 F.2d 1390, 1391, 59 CCPA 1091, 174 USPQ 259, 260 (CCPA 1972). We will therefore review only the merits of the composition claims, as did the Board.

The Board found that the claims to compositions of a hydrocarbon fuel and a tetra-orthoester were prima facie obvious over Sweeney '417 and '267 in view of Elliott and Howk. We agree. Appellant argues that none of these references discloses or suggests the new use which she has discovered. That is, of course, true, but the composition claims are not limited to this new use; i.e., they are not physically or structurally distinguishable over the prior art compositions except with respect to the orthoester component. We believe that the PTO has established, through its combination of references, that there is a sufficiently close relationship between the tri-orthoesters and tetra-orthoesters (see the cited Elliott and Howk references) in the fuel oil art to create an expectation that hydrocarbon fuel compositions containing the tetra-esters would have similar properties, including water scavenging, to like compositions containing the tri-esters, and to provide the motivation to make such new compositions. Howk teaches use of both tri- and tetra-orthoesters in a similar type of chemical reaction. Elliott teaches their equivalence for a particular practical use.

Our case law well establishes that such a fact situation gives rise to a prima facie case of obviousness. See In re Shetty, 566 F.2d 81, 85, 195 USPQ 753, 755-56 (CCPA 1977); In re Albrecht, 514 F.2d 1385, 1388, 185 USPQ 590, 593 (CCPA 1975); In re Murch, 464 F.2d 1051, 1054, 59 CCPA 1277, 175 USPQ 89, 91 (CCPA 1972); In re Hoch, 428 F.2d 1341, 1343, 57 CCPA 1292, 166 USPQ 406, 409 (CCPA 1970).

Appellant cites In re Wright, 848 F.2d 1216, 1219, 6 USPQ2d 1959, 1961 (Fed.Cir.1988), for the proposition that a prima facie case of obviousness requires that the prior art suggest the claimed compositions' properties and the problem the applicant attempts to solve. The earlier panel opinion in this case, In re Dillon, 892 F.2d 1554, 13 USPQ2d 1337 (now withdrawn), in fact stated "a prima facie case of obviousness is not deemed made unless both (1) the new compound or composition is structurally similar to the reference compound or composition and (2) there is some suggestion or expectation in the prior art that the new compound or composition will have the same or a similar utility as that discovered by the applicant." Id. at 1560, 13 USPQ2d at 1341 (emphasis added).

This court, in reconsidering this case in banc, reaffirms 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 that the burden (and opportunity) then falls on an applicant to rebut that prima facie case. Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have (In re Albrecht, 514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975); Murch, 464 F.2d at 1056, 175 USPQ at 92), that the prior art is so deficient that there is no motivation to make what might otherwise appear to be obvious changes (Albrecht, 514 F.2d at 1396, 185 USPQ at 590; In re Stemniski, 444 F.2d 581, 58 CCPA 1410, 170 USPQ 343 (CCPA 1971); In re Ruschig, 343 F.2d 965, 52 CCPA 1238, 145 USPQ 274 (CCPA 1965)), or any other argument or presentation of evidence that is pertinent. There is no question that all evidence of the properties of the claimed compositions and the prior art must be considered in determining the ultimate question of patentability, but it is also clear that the discovery that a claimed composition possesses a property not disclosed for the prior art subject matter, does not by itself defeat a prima facie case. Shetty, 566 F.2d at 86, 195 USPQ at 756. Each situation must be considered on its own facts, but it is not necessary in order to establish a prima facie case of obviousness that both a structural similarity between a claimed and prior art compound (or a key component of a composition) be shown and that there be 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. To the extent that Wright suggests or holds to the contrary, it is hereby overruled. In particular, the statement that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.3

Under the facts we have here, as described above, we have concluded that a prima facie case has been established. The art provided the motivation to make the claimed compositions in the expectation that they would have similar properties. Appellant had the opportunity to rebut the prima facie case. She 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. She attempted to refute the significance of the teachings of the prior art references. She did not succeed and we do not believe the PTO was in error in its decision.

Appellant points out that none of the references relates to the problem she confronted, citing In re Wright, and that the combination of references is based on hindsight. It is clear, however, that appellant's claims have to be considered as she has drafted them, i.e., as compositions consisting of a fuel and a tetra-orthoester, and that Sweeney '417 and '267 describe the combination of a liquid fuel with a related compound, a tri-orthoester. While Sweeney does not suggest appellant's use, her composition claims are not limited to that use;4 the claims merely recite compositions analogous to those in the Sweeney patents, and appellant has made no showing overcoming the prima facie presumption of similar properties for those analogous compositions. The mention in the appealed claims that the amount of orthoester must be sufficient to reduce particulate emissions is not a distinguishing limitation of the claims, unless that amount is different from the prior art and critical to the use of the claimed composition. See In re Reni, 419 F.2d 922, 925, 57 CCPA 857, 164 USPQ 245, 247 (CCPA 1970). That is not the case here. The amount of ester recited in the dependent claims can be from 0.05-49%, a very broad range; a preferred range is .05-9%, compared with a percentage in Sweeney '417 approximately equimolar to the amounts of water in the fuel which the ester is intended to remove (.01-5%).

Appellant attacks the Elliott patent as non-analogous art, being in the field of hydraulic fluids rather than fuel combustion. We agree with the PTO that the field of relevant prior art need not be drawn so narrowly. As this court stated in In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed.Cir.1986) (quoting In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979)):

[t]he determination that a reference is from a nonanalogous art is therefore two-fold. First, we decide if the reference is within the field of the inventor's endeavor. If it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved.

Following that test, one concerned with the field of fuel oils clearly is chargeable with knowledge of Sweeney '417, which discloses fuel compositions with tri-orthoesters for dewatering purposes, and chargeable with knowledge of other references to tri-orthoesters, including for use as dewatering agents for fluids, albeit other fluids. These references are "within the field of the inventor's endeavor." Moreover, the statement of equivalency between tri- and tetra-orthoesters in Elliott is not challenged. We therefore conclude that Elliott is not excludable from consideration as non-analogous art. It is evidence that supports the Board's holding that the prior art makes the claimed compositions obvious, a conclusion that appellant did not overcome.

Appellant urges that the Board erred in not considering the unexpected results produced by her invention and in not considering the claimed invention as a whole. The Board found, on the other hand, that no showing was made of unexpected results for the claimed compositions compared with the compositions of Sweeney. We agree. Clearly, in determining patentability the Board was obligated to consider all the evidence of the properties of the claimed invention as a whole, compared with those of the prior art. However, after the PTO made a showing that the prior art compositions suggested the claimed compositions, the burden was on the applicant to overcome the presumption of obviousness that was created, and that was not done. For example, she produced no evidence that her compositions possessed properties not possessed by the prior art compositions. Nor did she show that the prior art compositions and use were so lacking in significance that there was no motivation for others to make obvious variants. There was no attempt to argue the relative importance of the claimed compositions compared with the prior art. See In re May, 574 F.2d 1082, 1092-95, 197 USPQ 601, 609-11 (CCPA 1978).

Appellant's patent application in fact included data showing that the prior art compositions containing tri-orthoesters had equivalent activity in reducing particulate emissions (she apparently was once claiming such compositions with either tri-orthoesters or tetra-orthoesters). She asserts that the examiner used her own showing of equivalence against her in violation of the rule of In re Ruff, 256 F.2d 590, 596, 45 CCPA 1037, 118 USPQ 340, 346 (CCPA 1958). While we caution against such a practice, it is clear to us that references by the PTO to the comparative data in the patent application were not employed as evidence of equivalence between the tri- and tetra-orthoesters; the PTO was simply pointing out that the applicant did not or apparently could not make a showing of superiority for the claimed tetra-ester compositions over the prior art tri-ester compositions.

As indicated above, the Board held that it would not consider the appealed claims separately, since appellant did not. Nonetheless, appellant, in her brief before the Board, did refer generally to claims directed to fuels essentially free of alcohol (Brief at 32, J.App. at 122), and the Board, in its decision, did respond, stating that no objective evidence was presented to establish any different or unexpected results from limiting the amount of alcohol to less than 1%, In re Dillon, No. 87-0944, slip op. at 9-10 (Bd.Pat.App. & Int. Nov. 25, 1987). We agree. Moreover, Sweeney '417 describes compositions which also contain less than 1% alcohol, so there is no real distinction in the claims over the prior art.

Appellant also argued in her brief to the Board that she "must contest" the examiner's position concerning claims limited to no more than 5 or 9 volume percent added orthoester, mentioning claims 16-21 and 27-31. The Board did not expressly deal with these claims, but it is clear to us that, since these limits do not result in an amount of ester different from that disclosed to remove water in Sweeney '417, and no criticality is shown for these limitations, the subject matter of these claims has not been shown to have been nonobvious.

Regarding the method claims, the Commissioner urges affirmance, citing In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.Cir.1985), for the proposition that even "substitution of an unobvious starting material into an old process does not necessarily result in an unobvious process." The PTO has, as the Commissioner urges here, applied Durden regularly to claims to processes of making and processes of using, on the ground that the type of step involved in the claimed process is not novel.5

We make no judgment as to the patentability of claims that Dillon might have made and properly argued to a method directed to the novel aspects of her invention, except to question the lack of logic in a claim to a method of reducing particulate emissions by combusting. Suffice it to say that we do not regard Durden as authority to reject as obvious every method claim reading on an old type of process, such as mixing, reacting, reducing, etc. The materials used in a claimed process as well as the result obtained therefrom, must be considered along with the specific nature of the process, and the fact that new or old, obvious or nonobvious, materials are used or result from the process are only factors to be considered, rather than conclusive indicators of the obviousness or nonobviousness of a claimed process. When any applicant properly presents and argues suitable method claims, they should be examined in light of all these relevant factors, free from any presumed controlling effect of Durden. Durden did not hold that all methods involving old process steps are obvious; the court in that case concluded that the particularly claimed process was obvious; it refused to adopt an unvarying rule that the fact that nonobvious starting materials and nonobvious products are involved ipso facto makes the process nonobvious. Such an invariant rule always leading to the opposite conclusion is also not the law. Thus, we reject the Commissioner's argument that we affirm the rejection of the method claims under the precedent of Durden.

However, appellant did not argue in her brief the separate patentability of her method claims. The statement in her brief to the Board that "the invention 'as a whole' includes the property of the claimed compositions--which property is taken advantage of in the method claims" (Brief at 22, J.App. at 112) is not such a separate argument, since it implies more an added argument for the patentability of the composition claims than an argument that, even if the claimed compositions are found to have been obvious, the claimed methods were nonobvious for particularly stated reasons. Moreover, no such reasons were particularly stated by Dillon. We will therefore not analyze these claims separately and affirm the Board's rejection on that basis.The Dissent

The strong assertions by the dissent and its treatment of some of the case law impel us to make the following comments:

The dissent argues that our decision is "contrary to the weight and direction of ... precedent, as embodied in over three decades of decision"; that we are resurrecting the "Hass-Henze" Doctrine, which was "discarded thirty years ago"; and that our holding today "changes what must be proved in order to patent a new chemical compound and composition and its new use, and thus changes what is patentable." We have done none of the above.

What we have done is to decide the case before us on the basis of long-established principles which had provided a stable understanding of the chemical patent law until the issuance of the original panel opinion in this case which we have now vacated. Our intent is to restore the law to its state existing before that panel opinion.

The length of the dissent and the number of cases it discusses may convey the impression that the weight of past jurisprudence is contrary to our holding today. That is not the case. The cited cases are simply not controlling on the facts of the present case or they are not contrary. Many do not deal with the requirements of a prima facie case. Some involve process claims, not compound or composition claims. Others are not pertinent for other reasons.

In brief, the cases establish that if an examiner considers that he has found prior art close enough to the claimed invention to give one skilled in the relevant chemical art the motivation to make close relatives (homologs, analogs, isomers, etc.) of the prior art compound(s), then there arises what has been called a presumption of obviousness or a prima facie case of obviousness. In re Henze, 181 F.2d 196, 37 CCPA 1009, 85 USPQ 261 (CCPA 1950); In re Hass, 141 F.2d 122, 127, 130, 31 CCPA 895, 60 USPQ 544, 548, 552 (CCPA 1944). The burden then shifts to the applicant, who then can present arguments and/or data to show that what appears to be obvious, is not in fact that, when the invention is looked at as a whole. In re Papesch, 315 F.2d 381, 50 CCPA 1084, 137 USPQ 43 (CCPA 1963). The cases of Hass and Henze established the rule that, unless an applicant showed that the prior art compound lacked the property or advantage asserted for the claimed compound, the presumption of unpatentability was not overcome.

Exactly what facts constituted a prima facie case varied from case to case, but it was not the law that, where an applicant asserted that an invention possessed properties not known to be possessed by the prior art, no prima facie case was established unless the reference also showed the novel activity. There are cases, cited in the dissent, in which a prima facie case was not established based on lack of structural similarity. See In re Grabiak, 769 F.2d 729, 732, 226 USPQ 870, 872 (Fed.Cir.1985); In re Taborsky, 502 F.2d 775, 780-81, 183 USPQ 50, 55 (CCPA 1974). Some of the cited cases also contained language suggesting that the fact that the claimed and the prior art compounds possessed the same activity were added factors in the establishment of the prima facie case. E.g., In re Zeidler, 682 F.2d 961, 966, 215 USPQ 490, 494 (CCPA 1982); In re Grunwell, 609 F.2d 486, 491, 203 USPQ 1055, 1058 (CCPA 1979); In re Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA 1979); In re Swan Wood, 582 F.2d 638, 641, 199 USPQ 137, 139 (CCPA 1978); In re Lamberti, 545 F.2d 747, 751, 192 USPQ 278, 281 (CCPA 1976); In re Susi, 440 F.2d 442, 445, 58 CCPA 1074, 169 USPQ 423, 426 (CCPA 1971). Those cases did not say, however, as the dissent asserts, that, in the absence of the similarity of activities, there would have been no prima facie case.

For example, the dissent quotes a statement in Grabiak that "[w]hen chemical compounds have 'very close' structural similarities and similar utilities, without more a prima facie case may be made." 769 F.2d at 731, 226 USPQ at 871. That case does not state, as implied by the dissent, that without the similarity of utilities, there would not have been a prima facie case. A conclusion based on one set of facts does not necessarily rule out a similar conclusion with slightly different facts.

One case cited by the dissent as "rejecting the PTO's interpretation of Henze as establishing a 'legal presumption' of obviousness" was In re Mills, 281 F.2d 218, 47 CCPA 1185, 126 USPQ 513 (CCPA 1960). All that case decided, however, was that a one-carbon member of a homologous series is too far from the prior art disclosure of 8 to 12 members to justify the presumption. Id. at 223-24, 126 USPQ at 517-18.

We will not review all the cases cited in the dissent, but Stemniski is an important case, for it overruled Henze and In re Riden, 318 F.2d 761, 50 CCPA 1411, 138 USPQ 112 (CCPA 1963) (a case similar to Henze), "to the extent that [they] are inconsistent with the views expressed herein." 444 F.2d at 587, 170 USPQ at 348. The views that were expressed therein were that:

[w]here the prior art reference neither discloses nor suggests a utility for certain described compounds, why should it be said that a reference makes obvious to one of ordinary skill in the art an isomer, homolog or analog or related structure, when that mythical, but intensely practical, person knows of no "practical" reason to make the reference compounds, much less any structurally related compounds?

Id. at 586, 170 USPQ at 347. Thus, Stemniski, rather than destroying the established practice of rejecting closely-related compounds as prima facie obvious, qualified it by holding that a presumption is not created when the reference compound is so lacking in any utility that there is no motivation to make close relatives.

Albrecht followed this line of thinking when it held that the prior art compound so irritated the skin that it could not be regarded as useful and therefore did not create a motivation to make related compounds. 514 F.2d at 1392, 1395-96, 185 USPQ at 587, 590.

Properties, therefore, are relevant to the creation of a prima facie case in the sense of affecting the motivation of a researcher to make compounds closely related to or suggested by a prior art compound, but it is not required, as stated in the dissent, that the prior art disclose or suggest the properties newly-discovered by an applicant in order for there to be a prima facie case of obviousness.

The dissent cites the seminal case of Papesch, suggesting that it rejected the principle that we now "adopt," thereby implying that we are weakening Papesch. We are doing nothing of the sort. Papesch indeed stated that a compound and all of its properties are inseparable and must be considered in the determination of obviousness. We heartily agree and intend not to retreat from Papesch one inch. Papesch, however, did not deal with the requirements for establishing a prima facie case, but whether the examiner had to consider the properties of an invention at all, when there was a presumption of obviousness. 315 F.2d at 391, 137 USPQ at 51. The reference disclosed a lower homolog of the claimed compounds, so it was clear that impliedly a prima facie case existed; the question was whether, under those circumstances, the biological data were admissible at all. The court ruled that they were, id. at 391, 137 USPQ at 51, and we agree with that result. The dissent quotes the brief passage at the end of the Papesch opinion to the effect that the prior art must "at least to a degree" disclose the applicant's desired property, id. at 392, 137 USPQ at 52, but this brief mention was not central to the decision in that case and did not refer to the requirements of a prima facie case. Papesch is irrelevant to the question of the requirements for a prima facie case, which is the question we have here.

The dissent refers to a number of cases, including In re Lunsford, 357 F.2d 380, 53 CCPA 986, 148 USPQ 716 (CCPA 1966), stating that the court had rejected the Patent Office's position of "structures only." That case must be understood in the context of the refusal of the examiner to consider any showing of improved properties, not in the context of a discussion whether a prima facie case was created. The compounds were conceded to be sufficiently close to the prior art that, without a showing of a significant difference in properties, they would have been obvious. Id. at 381, 148 USPQ at 717.

The dissent asserts that the Shetty case "diverg[ed] from the weight of [the court's] precedent" in holding that a prima facie case was made based on similarities of structure. The court, in that opinion, accepted the prima facie case and concluded that "appellant ha[d] offered no evidence of unobviousness, as by showing an actual difference in properties." 566 F.2d at 86, 195 USPQ at 756 (citing Hoch). The opinion does not suggest that the court was diverging from the weight of precedent.

The dissent mentions positions advanced by the Commissioner, including citing the In re Mod, 408 F.2d 1055, 56 CCPA 1041, 161 USPQ 281 (CCPA 1969) and In re de Montmollin, 344 F.2d 976, 52 CCPA 1287, 145 USPQ 416 (CCPA 1965) decisions. We do not, however, in today's decision necessarily adopt any positions of the Commissioner other than those stated in our opinion and note that neither Mod nor de Montmollin dealt with the requirements of a prima facie case. They concerned the question whether the existence of a new property for claimed compounds in addition to a property common to both the claimed and related prior art compounds rendered the claimed compounds unobvious. We are not faced with that question today.

Other cases, e.g., In re Gyurik,