Taylor also states that "Determination of the dipole moment of the dimer as 0.07 D (in HCC1) clearly establishes" its structure as I below: R-N I, R = CH2 N-R As recognized by the examiner, the board and appellant, this structural formula is in error and the compound produced by the photodimerization of N-methyl-2-pyridone is actually homologous to those claimed here. The correct structural formula thus differs from the 3,7-diethyl-3,7-diazatricyclo [4.2.2.22,5] dodeca-9,11-diene-4,8-dione of appellant's claim 10 only by being 3,7-dimethyl- instead of "3,7-diethyl-." The corresponding hydrogenated product of Taylor differed in the same manner from the 3,7-diethyl-3,7-diazatricyclo [4.2.2.22,5] dodecane-4,8-dione of appellant's claim 7. The error was noted in three articles published in 1961, which articles were antedated by an affidavit under Rule 131. The Examiner The examiner rejected the appealed claims as obvious in view of Taylor under 35 U.S.C. 103. He held that appellant had only followed Taylor's teaching of the preparation of dimers wherein the nitrogen of the pyridone was substituted with either hydrogen or methyl to prepare the next higher members of the series so far as the ethyland propyl-substituted products of claims 7, 8, 10-12 and 22 are concerned. He stated that the products of claims 15-18 merely substitute a methyl group on one of the carbons of the pyridone without showing any advantage or surprising difference. He stated that the utility of the compounds "is derived from the amine function of the molecule and is applicable to both the instant compounds and the Taylor compounds to the same degree." The Board In agreeing with the examiner, the board commented that the Taylor disclosure of the dimerization of 2-pyridone and N-methyl-2-pyridone as examples of a, B-unsaturated lactams would render obvious to the person of ordinary skill the similar dimers of other a, ẞ-unsaturated 3 Taylor et al., J. Amer. Chem. Soc., Vol. 83, pp. 4484-4485 (1961); Ayer et al., Tetrahedron Letters, Sept. 1961, pp. 648-653; and Slomp et al. (Slomp, Paquette and MacKellar), J. Amer. Chem. Soc., Vol. 83, pp. 4472-4474 (Nov. 1961). lactams, "particularly the carbon and nitrogen substituted homologues of said dimers similarly produced from the corresponding homologous starting materials." It further stated: That the structure set forth in Taylor et al. is not accurate is not, in our opinion, here significant. If the products were described only in terms of the dimerization process for their preparation, it is quite clear that the substitution of homologous reactants would be obvious to the organic chemist and the mere fact that the structure is inaccurately stated does not render less obvious the herein claimed homologous dimers which would be thus produced. Appellant Appellant states that it was not known at the time his invention was made that Taylor actually produced compounds which were homologs of those claimed and that one skilled in the art wanting to produce a compound according to any of the rejected claims would have been taught nothing by Taylor. He urges that the Patent Office in its consideration of the process disclosed by Taylor, acted contrary to the statute by "judging the claimed inventions by how they were made." As to claims 15-18, appellant states that the compounds claimed are not homologs of Taylor's dimers and that there accordingly is no presumption of obviousness. Opinion We think that Taylor's disclosure of the production by photodimerization of 2-pyridone and N-methyl-2-pyridone as examples of a, B-unsaturated lactams would render it obvious to the person of ordinary skill in the art to provide similar dimers of other closely related a, B-unsaturated lactams. Since these two examples represent monomers having the nitrogen substituted with H and methyl, respectively, the continuation of the series to the extent of providing dimers of ethyl and propyl substituted monomers must be deemed obvious in the absence of any showing of unexpected properties. In like absence of a showing of unexpected properties, we also think it would be obvious to the person skilled in the art to provide dimers of an N-methyl-2-pyridone modified by the presence of a methyl substituent on one of the otherwise unsubstituted carbons of the ring. Since little could be more expected than that the resulting dimer would have two such substituents, that fact clearly does not detract from the obviousness of claims 15-18. [1] The error in the structural formula does not void Taylor as an enabling disclosure of its dimerization products. The structural formula does not fully describe the compound. In re Papesch, 50 CCPA 1084, 315 F.2d 381, 137 USPQ 43. Other characteristics figure in the identification of the reference compounds, including the disclosure that they are the products of photodimerization of 2-pyridones and the various other properties specified by Taylor, of which the empirical formula and the melting point are worthy of particular mention. [2] Appellant, in urging that the Patent Office improperly judged the invention by replying on the process employed by Taylor, points to the provision of 35 U.S.C. 103 that "Patentability shall not be negatived by the manner in which the invention was made." However, it is well known that this provision refers to how the applicant attained his invention as whether by a sudden inspiration or by long research. It does not deal with the question of obviousness over the prior art, which is the sole issue here. The decision is affirmed. PATENTS 424 F.2d 620; 165 USPQ 319 In re Ellen L. Mochel (No. 8291) 1. PATENTABILITY-INVENTION-IN GENERAL Obviousness does not require absolute predictability. United States Court of Customs and Patent Appeals, April 16, 1970 APPEAL from Patent Office, Serial No. 537,734 [Affirmed] Clinton S. Janes, Jr., attorney of record, for appellant. Joseph Schimmel for the Commissioner of Patents. Leroy B. Randall and Raymond E. Martin, of counsel. [Oral argument March 5, 1970 by Mr. Janes and Mr. Martin] Before RICH, ALMOND, BALDWIN, LANE, Associate Judges and ROSENSTEIN, Judge, sitting by designation. ALMOND, Judge, delivered the opinion of the court. This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1-7 in appellant's application entitled "Method of Glass Treatment and Product." 1 No claims have been allowed. 1 Serial No. 537,734 filed March 28, 1966 as a divisional application of serial No. 181,887 filed March 23, 1962. The invention relates to the strengthening of sodium aluminosilicate (predominantly Na2O-Al2O3-SiO2) glasses which contain at least ten percent alumina A1,O,) by treatment with a source of hydrogen ions in a sulfur oxide environment at a temperature above the strain point, but below the deformation point, of the glass. This results in a glass surface having a higher viscosity and lower coefficient of thermal expansion than that of the parent glass comprising the interior portion of the article so that upon cooling the surface contracts less than the inner portion of the glass thereby creating a surface layer of compressive stresses within the article. Acknowledging that the above has been known to the glass art as a treatment for soda lime glass (predominantly Na,O-CaO-SiO2), appellant states that the crux of her invention is the discovery that sodium silicate glasses having a relatively high alumina (Al2O3) content exhibit as much as a three or four-fold improvement in "abraded strength," i.e. strength displayed after surface abrasion. Illustrative are claims 1 and 5: 1. A method for strengthening a soda aluminosilicate glass article which comprises forming a glass article from a soda aluminocilicate glass composition consisting essentially, by weight on the oxide basis, of about 10-25% Na,O, 1025% Al2O3, the total of said Na, and Al.O, together with SiO, constituting at least 80% by weight of the glass composition, contracting said glass article at a temperature between the strain and deformation points of the glass with a source of hydrogen ions in a sulfur oxide environment to remove sodium ions from the glass surface in exchange for hydrogen ions and thereby produce a surface layer of compressive stress on the glass article and then cooling the article to room temperature. 5. A glass article exhibiting high strength after being subjected to surface abrasion, said article comprising a soda aluminosilicate glass containing, by weight by the oxide basis,about 10-25% Na2O, 10-25% Al2O, the total of the Na2O and Al2O together with SiO, constituting at least 80% by weight of the glass composition and having a surface compressive stress layer created by ion exchange replacement of sodium ions by hydrogen ions, whereby the concentration of said hydrogen ions is greater in said surface layer than in the interior of the article and the concentration of said sodium ions is greater in the interior than in said surface layer. Claims 2-4 depend from claim 1, claim 2 being drawn to the use of an atmosphere of moisture and a catalyzed mixture of sulfur dioxide and hydrogen, while claim 3 states the depth of the surface layer of compressive stress being produced to be at least five microns, and claim 4 recites the soda and alumina content of the starting glass as being 15-16 percent and 16-22 percent by weight, respectively. Claims 6 and 7 depend from claim 5 and recite in product terms the limitations of claims 3 and 4. Douglas and Isard (Douglas), "Transactions of the Society of Glass Technology," Vol. 33, pages 289-335 (1949). Weyl discloses dealkalization of the surface of soda lime glass containing some alumina to improve properties of chemical resistivity and strength by coating the surface with metakaolin and heating the glass. Alkali ions migrate from the glass surface while hydrogen ions in the clay replace them. The process is described as being carried out below the strain point to avoid surface deformation, the patentee stating, however, that when surface condition is of secondary importance, temperatures above the strain point may be used. Hood discloses a method of strengthening glass wherein lithium ions from an external source are exchanged with sodium and/or potassium ions present within the surface of the glass at temperatures between the strain and softening points of the glass. Surprisingly high tensile strengths are alegedly attained in silicate glasses containing 7.5% to 25% alumina (Al2O3) due to formation of beta-spodumene; however, TiO2 is also necessary to prevent spalling. An example showing an increase of 330% in abraded tensile strength is given. LeClerc discloses the dealkalization of glass by bringing the glass into contact with hot sulfuric acid or hot acid sulphate and causing the hydrogen ions thereof to be exchanged with the alkaline ions of the glass. An example using a glass containing 5.80% alumina (Al2O3) is given. The patent states also that the glass obtained can be subjected to heat treatment to improve its mechanical properties. Douglas describes the treatment of soda glass containing 2.6 percent alumina (Al2O3) in a sulfur dioxide atmosphere containing hydrogen ions resulting in alkalihydrogen ion exchange. Sulfur dioxide treatment above 500° is discussed as improving the mechanical strength of glass. The examiner rejected product claims 5-7 as failing to comply with 35 U.S.C. 112 in that they did not particularly point out the subject matter of the invention Specifically, he felt that the term "created by ion exchange replacement" was a method recitation which rendered the claims vague and indefinite. The board agreed with the examiner's position and added that since the process limitations in product claims 5-7 omitted the essential detail of temperature range, the claims were indefinite. The examiner also rejected claims 1-7 as unpatentable over Hood and Weyl "considered with" LeClerc and, two references not discussed |