(concurring).
The legal conclusion of obviousness required by 35 U.S.C. § 103 must be predicated on factual considerations. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684. Included among such considerations are the results which are achieved by the invention in issue. United States v. Adams, 383 U.S. 39, 86 S.Ct. 708. The further command of section 103 is that we consider the invention as a whole. This requires a factual assessment of such factors as the existing problem in the art towards which the invention in issue is directed; the respective contributions of the art and the applicant towards the solution of that problem; a consideration of the differences between the prior art and the invention in issue; and, finally, a determination of what would have been obvious to one of ordinary skill in the art at the time of appellant’s invention.
Here appellant has asserted the factual aspects of the problem facing the art; has disclosed a factual solution for this problem and has submitted evidence of facts from which it appears that the differences between the prior art and the invention claimed produced improved results of a magnitude that raises serious doubts as to the factual basis for the examiner’s finding of obviousness. Considering the record as a whole it seems to me the examiner’s position as affirmed by the board must fail for want of factual support. Viewed with hindsight after appellant’s disclosure it seems obvious indeed to substitute the claimed liquid phase operation for the vapor phase operation of the prior art. The appealed claims, however, are claims to a process and thus necessarily involve more than the mere substitution of a liquid phase for a vapor phase operation in an otherwise old process. Operational differences over the prior art and new parameters of operation are clearly required before appellant's liquid phase process is operational.
A process is a unitary concept which does not lend itself to the type of dissectional analysis here employed by the examiner and the board. In Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139 (1876), Mr. Justice Bradley pointed out:
A process is a mode of treatment of certain materials to produce a given *877result. It is an act, or series of acts, performed upon the subject matter to be transferred and reduced to a different state or thing.
The unitary nature of the claimed process does not appear to have been considered here by the examiner and the board. Instead, the rationale of the appealed decision appears to be simply that it would have been obvious for one of ordinary skill in this art to substitute a liquid phase reaction for the vapor phase reaction of the prior art. The error here in so considering appellant’s process is the old error of considering the separate steps of the process rather than considering the process as a whole.
To here give effect to the mandate of 35 U.S.C. § 103, we must start with a unitary process, which is the invention as a whole, and then consider the factual significance of the claimed portions thereof as they contribute to the “effect” by which the obviousness of the process is to be measured. Thus when appellant submitted affidavit proof of this “effect” and related it to the differences between the claimed process and the prior art processes, I think much more is required of the examiner than a reiteration of his subjective opinion concerning the obviousness of the invention even though stated in terms of criticism of the averments in the affidavit. At this level both the applicant and the examiner should be concerned with development of facts on which the ultimate legal conclusion of obviousness can be grounded. Here the office position fails because the examiner did not come forward with factual support for his position after appellant had factually supported the contrary position. If the office position is to be sustained, when challenged it must be supported by factual data from the technical literature or references which would have made obvious to one of ordinary skill in this art, at the time of appellant’s invention, that the change from vapor phase to liquid phase operation would produce the results appellant has shown to flow therefrom.
I do not consider that the examiner has here discharged the obligations imposed on the Patent Office by the Deere case. The legal conclusion of obviousness under 35 U.S.C. § 103 must be based on factual considerations which I find to be missing from the present record.