In re Dillon case brief

In re Dillon case brief summary
919 F.2d 688 (1990)

CASE SYNOPSIS

Petitioner appealed the judgment of the United States Patent and Trademark Office Board of Patent Appeals and Interferences rejecting certain claims in a patent application.

CASE FACTS
Petitioner's patent application described and claimed her discovery that the inclusion of certain tetra-orthoester compounds in hydrocarbon fuel would reduce the emission of solid particulates during combustion of fuel. The Board of Patent Appeals and Interferences rejected her patent application, holding all the claims to be unpatentable on the ground of obviousness under 35 U.S.C.S. § 103.


DISCUSSION

• On appeal, the court held that properties had to be considered in the overall evaluation of obviousness and the lack of any disclosure of useful properties for a prior art compound might indicate a lack of motivation to make related compounds, thereby precluding a prima facie case. 
• But, it was not correct that similarity of structure and a suggestion of the activity of an applicant's compounds in the prior art were necessary before a prima facie case was established.

CONCLUSION
The court affirmed the judgment of the Board of Patent Appeals and Interferences rejecting certain claims in petitioner's patent application because petitioner failed to overcome the presumption of obviousness.

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