Appeal No. 1996-3826
Application 08/222,477
providing a stable emulsified fuel having a viscosity as taught in the reference, and indeed, the amounts
of fuel, water, alcohol and surfactant, stated in wt.%, used in these examples would appear to overlap
the amounts of the same ingredients, stated in vol.%, specified in claim 1 (see supra pp. 8-9). Thus,
contrary to appellant’s contentions, one of ordinary skill in this art would have found in the disclosure of
Kawaai the reasonable suggestion of the role of alcohol and guidance of the amounts thereof to be
employed with respect thereto. We find no evidence of unexpected results either in appellant’s
specification or in the Gunnerman Declaration which would establish the criticality of the range of
alcohol specified in claim 1 vis-à-vis the teachings of Kawaai with respect to this component. We agree
with appellant’s characterization that the evidence in the Declaration is a summary of tests that show the
effect of varying the content of this ingredient and note that the cited portion of the specification is of
similar content. Thus, we find that the evidence of record on which appellant relies is directed to alleged
unexpected properties of the claimed aqueous fuel compositions rather than to an actual difference in
properties between these claimed compositions and the aqueous fuel compositions of Kawaai. See In
re Hoch, 428 F.2d 1341, 1343-44, 166 USPQ 406, 409 (CCPA 1970).
Furthermore, we are not convinced that the aqueous fuel compositions of Kawaai differ from
the aqueous fuel compositions encompassed by appealed claim 1 simply because the reference teaches
that the fuel compositions thereof are spray combusted in the combustion chamber of a burner rather
than in a combustion chamber of an internal combustion engine. As we found above, based on this
record, the phrase “combustible in an internal combustion engine” does not place any limitation(s) on the
aqueous fuel compositions encompassed by appealed claim 1 and is a statement of intended use.
Indeed, as we further found above, the breadth of the definition of the term “internal combustion engine”
set forth in appellant’s specification would include an engine with fuel injection means such that, to use
appellant’s words, the fuel would be injected into the combustion chamber “in atomized form.”
Appellant has not shown that the aqueous fuels of Kawaai could not be used with such a fuel injection
system. To the extent that appellant contends that the cited language of claim 1 is a “method or process
of use” limitation, such a limitation has no place in a composition of matter claim. See In re Wiggins,
397 F.2d 356, 359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA 1968) (“[A]ppellant’s discovery of the
analgesic properties of ‘O2’ and of a composition containing it could properly be claimed only as a
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