The Dow Chemical Company v. American Cyanamid Company

DAVIS, Circuit Judge,

dissenting.

I.

In my view, a contrary result is compelled by this court’s earlier decision in Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 227 USPQ 293 (Fed.Cir.1985) (Sohio).1 The chemical process involved here is substantially the same process at issue in Sohio, although the challenged patents are different. Because of the general identity of the chemical process, there are holdings in Sohio that bear directly on the correctness of the District Court’s decision in this case. The most important of these is our Sohio holding that the District Court there correctly “found that the combined teachings [of the Watanabe article and Reppe patent]2 would have indicated to one of ordinary skill in the art that copper3 was an effective agent for producing a catalysis in the process of converting a nitrile to an amide.” 774 F.2d at 455, 227 USPQ at 298.4 This was a legal determination of obviousness, but in the current case Judge Beer made the precisely contrary determination that “the hydration of nitriles by the use of a copper catalyst obtained through the reduction of a copper compound was not predictable, and was not obvious.” Because Sohio is a binding legal precedent on this exact point,5 the District Court’s contrary legal holding should not stand. But that erroneous holding of the District Court was a mainstay of its opinion sustaining the validity of the patents at issue in this case.

II.

Spelling out the matter somewhat further, my thought is that the District Court erred, as a matter of law, in holding that the Dow patents would not have been obvious under 35 U.S.C. § 103. The court first discussed each of the pertinent prior art references separately and, on that basis, was able to conclude that none of those references specifically disclosed the hydration of acrylonitrile to acrylamide using a reduced copper compound. It goes without saying, however, that it is not necessary, *624under § 103, that each and every element of the claimed invention be disclosed in a prior art reference. Such an analysis is properly addressed only for the issue of anticipation under 35 U.S.C. § 102. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). Rather, the proper analysis under § 103 is whether the invention, taken as a whole, would have been obvious to one skilled in the art. Environmental Designs Ltd. v. Union Oil Co., 713 F.2d 693, 698, 218 USPQ 865, 870 (Fed.Cir.1983) cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173 (1984).

While the District Court did make two conclusions on obviousness purportedly based on the prior art considered as a whole, to my mind both conclusions must be rejected. First, the court decided that the prior art taught that the hydration of nitriles was not obvious since it was not predictable. As discussed supra, this conclusion runs directly contrary to this court’s holding in Sohio and therefore should not be accepted since it involved the identical prior art. Second, the court concluded that the “process claimed in the Dow patents, therefore, differ from the prior art in the nature of the nitrile hydrated and the nature of the resultant amide” (e.g., acrylonitrile hydrated to acrylamide). This conclusion is unsupported by the District Court’s own opinion which acknowledged that the Greene Patent (U.S. Letters Patent 3,381,034) taught that a copper catalyst could be used to convert “aromatic and aliphatic nitriles, including acrylonitriles, to their corresponding amides.”

I would reverse the decision of the District Court.

. Sohio came to us on appeal from the same District Court as tried the current suit (the Eastern District of Louisiana) but from a different judge of that court.

. These two references are likewise present in the current case.

. The Sohio courts made no distinction between copper in its ionic state and reduced metallic copper as used in the catalytic conversion at issue.

. Our Sohio opinion also specifically upheld that District Court’s appraisal of the Watanabe and Reppe references. 774 F.2d at 454-55, 227 USPQ at 298.

. I do not rely at all on principles of former adjudication (res judicata) but on the rule that a less than in banc panel of this court is required to follow the legal determinations of a prior panel.