Appeal No. 1996-3826
Application 08/222,477
preparation of similar stable oil-in-water type emulsified fuels in which the same and similar ingredients
are added in some order, if not already combined, to a device that will form the emulsion, without
limitation on the type of device to be employed. Dubin teaches that an emulsion system, which can
contain some of the fuel, can be admixed or dispersed into the water and/or fuel before emulsification or
added separately during or after emulsification. Thus, we find that, prima facie, one of ordinary skill in
this art following the combined teachings of Kawaai and Dubin would have selected the optimum
method of combing the ingredients with respect to the emulsifying device to be used and the desired
emulsion to be obtained by routine experimentation, and thus would have arrived at the claimed
methods encompassed by claims 13, 24 and 36, in the absence of any unobvious results. See In re
Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). As we found
above (see supra p. 6), claim 24 does not require the presence of any amount of dihydroxyethyl tallow
glycinate.
The product-by-process claims 33 and 43 define an aqueous fuel in terms of the methods of
claims 13 and 36, respectively, which claimed methods, we have found, would have been prima facie
obvious to one of ordinary skill in this art from the combined teachings of Kawaai and Dubin as set forth
above. Thus, we find that one of ordinary skill in this art in preparing the stable water-in-oil type
emulsified fuels of Kawaai following the combined teachings of Kawaai and Dubin would have
reasonably arrived at stable oil-in-water type emulsified fuel compositions that are identical or
substantially identical to the claimed encompassed by 13 and 36. Accordingly, the burden falls upon
appellant to establish by effective argument and/or objective evidence that the claimed invention
patentably distinguishes over the teachings of this combination of references even though the rejection
here is under § 103. See Thorpe, supra; Best, supra; Wertheim, supra; In re Fessmann, 489 F.2d
742, 744, 180 USPQ 324, 325-26 (CCPA 1974) In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972). In similar manner to our discussion above (see supra p. 9), 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 33, and for water alone in
claim 43, which compositions can further contain the other ingredients disclosed in Kawaai. Thus, we
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