In the book "Invention Analysis and Claiming, a patent lawyer's guide" (second edition) by Ronald Slusky he makes the point that "A claim reading on prior art is unpatentable whether or not the prior art solves the problem or recognizes its existence." (Chapter &, page 89). Is this a true statement indeed? He references: In re Dillon, 892 F.2d 1554, 13 USPQ2s 1337 (Fed. Cir. 1989) (en banc).

I looked up the reference in Westlaw and came across the following related reference: In re Dillon, 919 F.2d 688 16 USPQ2d 1897 (Fed. Cir 1990) whereby the conclusion was:

"Following the weight of precedent, I would hold that a prima facie case of obviousness of a new chemical compound or composition requires consideration of not only the chemical structure but also the newly discovered properties, in light of the teachings and suggestions of the prior art. I would expressly reject the Commissioner's position that determination of the prima facie case is made regardless of the properties disclosed in the inventor's application.

Since there is no suggestion in the prior art references, alone or in combination, of the particulate-reducing property and use discovered by Dillon for her new compositions, a prima facie case of obviousness has not been made. Thus it is not necessary to patentability that Dillon establish *720 that the prior art compositions do not possess the same soot-reduction property and use. I would reverse the board's rejection of claims 2–14, 16–22, and 24–37, all of the claims before us on appeal."

What is the difference between these two references? Does the 1990 reference affect the above point made by Slusky? Doesn't the 'reverse doctrine of equivalence' makes his point not true?

1 Answer 1


The excerpt you quote is from a dissent in the 1990 case, not the majority opinion.

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