Appeal No. 1996-3826
Application 08/222,477
art would have found in this disclosure the reasonable suggestion that alcohol would function in similar
manner with other fuels as disclosed in the reference.
Thus, we agree with the examiner (answer, page 5) that, prima facie, Kawaai would have
reasonably suggested to one of ordinary skill in this art that alcohol can be mixed with water to form the
continuous phase of a stable oil-in-water type emulsion fuel containing, inter alia,
gasoline, as a dispersed phase, as well as nonionic surfactants, stabilizers and neutralizers, in the
amounts reasonably suggested by the reference, with the reasonable expectation that the stable oil-in-
water type emulsified fuels obtained would have the viscosity taught in the reference and can be spray
combusted. See Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1845-46 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 141 USPQ 814 (CCPA 1964).
Accordingly, because the amounts in wt.% of water, alcohol, surfactant and fuel as disclosed,
suggested and exemplified in aqueous fuel compositions by Kawaai would reasonably appear to overlap
with the amounts in vol. % of the same ingredients specified for the aqueous fuel compositions in
appealed claim 1, which compositions can further contain the other ingredients disclosed in the
reference, we find that, prima facie, one of ordinary skill in this art following the teachings of Kawaai
would have reasonably arrived at stable oil-in-water type emulsified fuel compositions that are identical
or substantially identical to the claimed stable oil-in-water type emulsified fuel compositions
encompassed by claim 1. Indeed, we find that, prima facie, the disclosure of Kawaai would have
reasonably suggested to one of ordinary skill in this art that stable water-in-oil type emulsified fuels that
contain slightly greater and lesser amounts of fuel, water, alcohol and/or surfactant than disclosed in the
reference would reasonably be expected to have the same or similar properties to those emulsified fuels
containing the amounts of these ingredients disclosed therein. Thus, the burden has shifted to appellant
to patentably distinguish the claimed fuels over the teachings of Kawaai. See Titanium Metals Corp.
v. Banner, 778 F.2d 775,782-83, 227 USPQ 773, 779 (Fed. Cir. 1985) (“[T]he Russian article
discloses two alloys having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni,
balance titanium. The two alloys in the prior art have 0.25% Mo - 0.75% Ni and 0.31% Mo - 0.94%
Ni, respectively. The proportions are so close that prima facie one skilled in the art would have
expected them to have the same properties.”); In re Boesch, 617 F.2d 272, 275-76, 205 USPQ 215,
- 9 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007