Appeal No. 1996-3826
Application 08/222,477
find that, prima facie, one of ordinary skill in this art 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 claims 33 and 43. We further find
here, as we did above, 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 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 in the reference.
Accordingly, since a prima facie case of obviousness has been established over the combined
teachings of Kawaai and Dubin with respect to the claimed aqueous fuels and methods of making the
same encompassed by appealed claims 2, 6, 13, 24 and 36 and the claimed aqueous fuels
encompassed by claims 33 and 43, we have again evaluated all of the evidence of obviousness and
nonobviousness based on the record as a whole, giving due consideration to the weight of appellant’s
arguments. See generally, Johnson, supra; Piasecki, supra.
We have carefully considered all of appellant’s arguments and the evidence presented in the
specification. Appellant submits that because of the several differences between Kawaai and the claims
we consider here, the “obviousness of the combination of references ceases to be apparent when the
secondary reference does not supply all of the deficiencies” (brief, page 14). Appellant contends that
Dubin would have lead one of ordinary skill in the art away from the claimed aqueous fuels and methods
of making the same because the “relative nature of the [external] phase is not important to Dubin” (id.,
page 15). Appellant points out that the aqueous fuel of Dubin is “to be injected through burner nozzles
for combustion . . . [and] discloses a manifold to permit the dual injection of both natural gas and the
emulsion” (original emphasis deleted) and there is no indication from the references that the
“compositions disclosed by [Kawaai] and/or Dubin are capable of combustion in an internal combustion
engine as in appellant’s claims” (id., page 16). Appellant further argues that “both references fail to
disclose the importance of the role of alcohol in maintaining stability of fuel compositions” and thus there
is no reason why one of ordinary skill in the art would have combined the references to modify the
compositions of Kawaai (id., pages 16-19). Appellant observes that Dubin does not disclose a fuel
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