(dissenting).
I fail to see the obviousness of appellant’s evident contribution to the art of successful packaging of potasium diehlorocyanurate (KDCC) bleach compositions in polyvinyl alcohol (PVA) film containers in such manner as to preserve the water solubility characteristic of the film during storage. The majority has not pointed to anything in the prior art which either recognizes the problem or suggests how to solve it. The solution of the “unsolved problem” appears to have been totally ignored throughout this prosecution. It now appears obvious only by hindsight reasoning, much of it originating since this case left the Patent Office, where there is some familiarity with the art. The majority even adverts to “the unfortunate circumstance that the examiner and board did not discuss or controvert the existence of the unsolved problem * * It is indeed unfortunate, but that is no reason for penalizing the applicant, whose application is primarily directed to a discussion of it and how one solves it.
It is clear to me that appellant has found out (discovered) a considerable amount of useful technology on the practical packaging of KDCC bleach compositions in PVA films which is not to be found by reading the references.
It must be conceded there are limitations in the claims on appeal, alleged by appellant to be of importance to his practical solution of the problem but minimized if not extinguished by everyone else, which do distinguish from the prior art unless we apply to that art an undue amount of imagination and surmise. For example, the majority opinion speculates about the presumed art’s desire to use “relatively pure KDCC” which would (if such desire exists and is followed) result in using KDCC within the claimed pH range of 5.8-6.4. Appellant’s specification shows that to be a factor of consid*591erable importance, unknown to the art, in preventing the insolubilizing of the PVA container. The examiner and the board neglected entirely to discuss this specific limitation. Indeed, their arguments in support of the rejection are primarily on the following rather broad basis: (1) packaging “detergent and similar compositions” in PVA is old; (2) appellant’s bleach compositions are “substantially” old; and (3) it would therefore be obvious to package appellant’s compositions in PVA. It might. But if that is all that is done, it has been found that the PVA envelopes grow increasing insoluble during storage and do not dissolve in water, as desired when used in the laundry. What appellant is claiming is not merely what the board found to be obvious. His invention is not a broad one. It is a narrow solution to a narrow problem, he has claimed it specifically, he has taught the art the solution, and I think he is giving a sufficient quid pro quo in his advancement of the art to justify giving him his limited claims, with the result that his solution is made known to the world through the issuance of a patent.
The record shows it is not obvious how to successfully package KDCC bleach compositions in PVA. The broad concept the Patent Office deems to have been obvious to those skilled in the art appears to have been considered by the latter not only to be unobvious but to have been impracticable. This looks to me like another instance where the obviousness of an invention is clear only to the relatively unskilled people who have no connection with the art.
I particularly object to the evolution in the majority opinion of entirely new theories of application of the prior art to the obviousness issue, such as the arguments predicated on the supposed effects of Morgenthaler’s alkali coating on the KDCC. I do not find that the Patent Office ever applied such a theory. While it is not for me to provide the technical answer to it — that being the supposed right of the appellant with respect to new theories of rejection1— I nevertheless note the following: The majority reasoning is that Morgenthaler’s alkali coating should suggest to those skilled in the art a solution to the problem of insolubilizing of PVA envelopes during storage, wherefore it is obvious to use Morgenthaler’s composition in that environment. But appellant’s specification discloses, inter alia (my emphasis) :
The alkaline material in the bleach product tends in the presence of moisture, to hydrolyze an additional percentage of unhydrolyzed vinyl acetate in the film, thereby changing the water solubility characteristics of said film.2 3
I also note from the “Elvanol” reference (“Elvanol” being DuPont’s trade name for various polyvinyl alcohols differing in degree of polymerization and degree of hydrolysis, or saponification) that “the most widely used ‘Elvanol’ plasticizer is glycerin,” a notoriously hygroscopic material.3 The record shows *592that it is necessary to use plasticizer in PVA to make it flexible. Glycerin is one of the plasticizers disclosed by appellant. Now an envelope of water-soluble PVA plasticized with a hygroscopic plasticizer would scarcely be calculated to keep moisture out of its contents and I suggest, merely as a counter-theory to the majority’s theorizing about the prior art, and quite as tenable I think, that Morgenthaler’s alkaline coating would be thought likely, by those skilled in the art, to hydrolyze and insolubilize the PVA and render its use impracticable. This is because moisture would be expected to get to the alkaline coating on Morgenthaler’s coated KDCC particles through the PVA envelope containing water-absorbing plasticizer, and the moist alkaline material, independently of the KD CC, thereupon would cause further hydrolysis and reduction in the solubility of the PVA. I may be wrong. So may the majority.
In any event, I consider it beyond the province of this court to devise new theories as to how combinations of chemical compounds and mixtures disclosed by the references may interact or react under various conditions of storage over different periods of time. Such matters can be determined only by actual tests. Appellant has made tests. We have not, nor has the Patent Office. Neither do any of the references show any investigation of the problem of preventing the insolubilization of PVA enclosures by the materials contained in them! I think the rejections — both those made by the Patent Office and those independently conceived by the majority — are too speculative to support a finding of obviousness under section 103 and I would reverse.
. See 35 U.S.C. § 132. The province of this court is to review the rejections as made in the Patent Office where applicants are provided a reasonable opportunity to traverse them and where there is supposed to be technical competence to weigh their answers.
. Numerous “alkaline material” components in the “bleach product” are disclosed including those used by Morgenthaler for coating. The specification explains, with respect to this so-called water-soluble so-called PVA (which is not a single specific substance), that PVA is made by hydrolyzing polyvinyl acetate and that maximum water-solubility is obtained when it is approximately 88% hydrolyzed. Appellant prefers to start by using for packages a material which is about 80% hydrolyzed, the lower end of the 80-90% range he considers desirable, so that some further hydrolysis during storage will not adversely affect solubility.
. See the definitions of “glycerol,” which is glycerin, in Webster’s New International Dictionary and Van Nostrand’s Scientific Encyclopedia, the latter stating expressly that it “absorbs water on exposure to the atmosphere.”