
    112 F. (2d) 812
    In re Grettie
    (No. 4332)
    
      United States Court of Customs and Patent Appeals,
    June 24, 1940
    
      Norbert E. Birch for appellant.
    
      Howard S. Miller for the Commissioner of Patents.
    [Oral argument May 13, 1940, by Mr. Bircli and Mr. Miller]
    Before Garrett, Presiding Judge, and Blind, Hatfiei.d, Lenroot, and Jackson, Associate Judges
   Hatfield, Judge,

delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting claims 3, 4, 10, and 11 in appellant’s application for a patent for a method of stabilizing shortening materials — edible fats and oils, such as lard, beef fat, hydrogenated cottonseed oil, and other vegetable and animal fats and oils and mixtures thereof. The stabilizing is effected by means of a specific antioxidant, referred to in the claims as a “hydroxy monobasic aliphatic acid having a hydroxyl radical as close to the carboxyl end of the molecule as the beta position.”

Appellant enumerates many examples in his application of the monobasic acids covered by the appealed claims, such as glycolic acid, lactic acid, etc.

Owing to the decision of the Board of Appeals, we are particularly interested here in determining whether the references of record disclose the use of glycolic acid as an antioxidant for non-drying oils (the type here involved), the board having allowed specific claims — 5 and 12 — which set forth the .use of lactic acid as an antioxidant for “shortening.”

Claims 3 and 4 are sufficiently illustrative of the appealed claims, claim 3 being illustrative of claim 10 and claim 4 being illustrative of claim 11. They read:

3. The method of stabilizing shortening which comprises adding thereto and incorporating therewith a quantity of a hydroxy monobasic aliphatic acid having a hydroxyl radical as close to the carboxyl end of the molecule as the beta position.
4. The method of stabilizing shortening which comprises adding thereto and incorporating therewith from .001 per cent to .05 per cent of a hydroxy mono-basic . aliphatic acid having a hydroxyl radical as close to the carboxyl end of the molecule as the beta position.

The references are:

Eckey, 1,993,152, March 5, 1935.
Comptus Rendus, 179 (1924), pp. 237-243.
O. A. 20, page 1146.
Br. J. Oh. Ind., (1926) Yol. XLV, Supplement, page 135.

Claims 4 and 11 are more specific than claims 3 and 10 in that they call for a certain percentage, ranging from “.001 per cent to .05 per cent,” of the hydroxy monobasic aliphatic acid. There is nothing, however, in appellant’s application to indicate that the limitation as to the quantity of the hydroxy monobasic aliphatic acid present is critical.

In its original decision, the Board of Appeals held that the patent to Eckey was not a proper reference, and, in this connection, said:

Tlie Eckey patent cited by the examiner relates to the stabilization of fatty matter by the use of an acid-reacting compound containing a phosphate radical. There is no suggestion in this patent of using monobasic acids of the type here claimed.

The board also held that the Comptus Rendus reference was not a proper reference, and with regard thereto stated:

The third publication referred to by the examiner, Comptus Rendus, refers to the use of certain sulphur-containing materials as stabilizing agents. The sulphur in these compounds appears to be the agent relied xrpon for the stabilizing function. The fact that this material was combined with glycolic and lactic acids does not seem to be persuasive of the utility of the acids themselves for stabilizing purposes. Inasmuch as this is the only reference which has any definite teaching with respect to the use of lactic acid, we are of the opinion that claims 5 and 12 are allowable.

Relative to the reference C. A. 20, page 1146, the board said:

Page 1146 of Chemical Abstracts contains a paragraph referring to the stabilization of oils] which suggest that the stabilizing effect of certain acidic materials is due to the COaH group in the presence of an OH group. The paragraph indicates, however, that in the case of non-drying oils there is a tendency to weaken the stabilizing action thereof. This statement is made in connection with a test involving specifically benzoic and salicylic acids. The subsequent test appears to have been made with acetic and glycolic acids. With respect to these members it is stated that they retarded oxidation in the same manner as benzoic or salicjdic acid:
“the presence of the OH group again favoring the stabilization of drying oils and the stabilization of non-drying oils.”
There is an apparent inconsistency between these two statements which renders the teaching somewhat indefinite.

The board then quoted from the remaining reference of record (“Br. J. Ch. Ind.”), referred to by the board as “British Chemical Abstracts,” as follows:

“Experiments made with linseed and olive oils shows that phenol, resorcinol, quinol, and pyrogallol, far from acting as anti-oxygens, actually accelerate the autoxidation of these oils. This oxidation is retarded, but not inhibited, by salicylic or benzoic acid, whereas complete stabilisation of non-drying and drying oils is effected by acetic and glycollie acids respectively, the action of these acids being quite comparable with the catalytic action of phenols in stabilising acraldehyde.”

and, in bolding that the appealed claims were unpatentable over that reference, said :

We find In the quoted matter * * * a definite disclosure that glycolic acid is a stabilizing agent which gives complete stability with drying oils. The Chemical Abstracts publication also indicates that it has some stabilizing value in connection with non-drying oils although acetic acid is said to be more effective for that purpose. It seems to us that the utilimtion of an agent which is known t,o he effective with vegetable oils, such as olive oil, for other vegetable or animal oils particularly useful as shortening, involves nothing more than the carrying out of a routine experiment to determine whether or not a compound which may he reasonably expected to work is, in fact, operative. [Italics supplied.]

In its decision denying appellant’s petition for rehearing, the Board of Appeals stated, inter alia:

As we pointed out in our decision, two publications relied on by the examiner, including the reference above referred to, taught that glycolZic acid, an acid falling within the broad class claimed, was an effective antioxidant for linseed oil and olive oil, especially the former. It is our view that, inasmuch as shortening is an oily material closely related to other oils, and olive oil, in particular, it would not require invention to use glycolZic acid as an antioxidant or “stabilizing medium” for shortening.

It is contended here by counsel for appellant that there is no suggestion in the reference C. A. 20, page 1146, that glycolic acid is a suitable antioxident for olive oil and other non-drying oils, including those covered by the term “shortening.”

We have carefully examined the statements contained in the reference C. A. 20, page 1146, which is referred to in the board’s decision as “Chemical Abstracts” and which is apparent^ an American publication, and are unable to agree with counsel for appellant that that reference does not suggest the use of glycolic acid as an anti-oxident for non-drying oils. We quote from the publication as follows:

Under the same conditions, however, benzoic and salicylic acids had a powerful stabilizing action, the former being the more effective with olive oil and the latter with linseed oil. This would indicate that the inMbitory action is due to the COzH group, the simultaneous presence of the OH group in turn fortifying this action with drying oils and weakening it with non-drying oils. To det. whether the anti-oxident action was due to the OO-JI group itself or to the combined action of 00¡H and the GJL, nucleus, the effect of HOAc and glycolic acid under similar conditions was detd. Both these retai'ted oxidation in the same manner as benzole or salicylic acid, the presence of the OH group again favoring the stabilization of drying oils and the stabilization of non-drying oils. The most effective agent for linseed oil was glycolic acid, that for olive oil was HOAc, practically complete stabilization being [effected with 0.1% and 0.5% resp., under the conditions described. [Italics ours.]

It will be observed that it is therein stated that “benzoic and salicylic acids had a powerful stabilizing action, the former being the more effective with olive oil [a non-drying oil] and the latter with linseed oil.” It is also stated therein that it was determined that “HOAc and glycolic acid * * * retarded oxidation [of both the olive oil, a- non-drying oil, and linseed oil, a drying oil] in the same manner as benzoic or salicylic acid.”

It is true, as stated by the board, that there is an inconsistency in the quoted excerpt from the reference in that in the first part thereof it is stated that “the simultaneous presence of the OH group [with the C02H group] in turn fortifying this [inhibitory] action with drying oils and weakening it with non-drying oiZs,” and later, in referring to the inhibitory action of “HOAc” and glycolic acid, it is stated that the “presence of the OH group again favoring the stabilization of drying oils and the stabilization of non-drying oils.^ [Italics supplied.]

We are of opinion, however, as was the Board of Appeals, that the inconsistency does not effect the pertinency of the reference, so far as it is suggested therein that glycolic acid is a suitable anti-oxident for olive oil.

It is conceded by counsel for appellant that olive oil and the shortening materials here involved are non-drying oils.

We are in agreement with the conclusion reached by the Board of Appeals that as the prior art recognized that glycolic acid is an effective antioxident for non-drying oil, such as olive oil, there would be no invention in determining by mere experiment that glycolic acid was also effective as an antioxidant for other non-drying edible oils — shortening materials — such as lard, beef fat, hydrogenated cottonseed oil, and other vegetable and animal fats and oils and mixtures thereof.

Holding the views hereinbefore expressed, we deem it unnecessary to discuss the reference Br. J. Ch. Ind.

The decision of the Board of Appeals is affirmed.  