Was the Board correct about DE LAJARTE in Ex parte Yoshihara
The Board cited page 874 of de Lajarte for the proposition: Applicants have the burden of showing that a component in a reference would materially affect the basic and novel characteristics of a claimed composition.
Page 874 does contain the text
The effect of "consisting essentially of" was considered in In re Janakirama-Rao, 50 CCPA 1312, 317 F.2d 951, 137 USPQ 893, where, as in the present case, the claims were directed to a glass composition and the reference contained some modifying components in addition to those claimed by appellant. The court found that appellant's glass had no basic or novel characteristics and thus did not distinguish over the reference. Thus, here appellant has the burden of showing the basic or novel characteristics of his insulating glass. He has met this burden by pointing out in his specification and claims the great increase in resistance to perforation resulting from his composition.
HOWEVER, page 874 ALSO contains the text:
In the total absence of evidence in the record to indicate that the amber glass disclosed by Lyle would be expected to have desirable electrical insulating properties, we can find no justification for placing the burden on applicant to conduct experiments to determine the insulating properties of the colored glass disclosed by Lyle. Although there are only very slight differences between the Lyle composition and that sought to be patented, we cannot assume that these small differences are incapable of causing a difference in properties. Appellant, in showing that his glass has basic and novel properties (at least as far as the record is concerned), would appear to have met his burden.
So, in de Lajarte, the patent applicant showed his composition had basic and novel characteristics AND there was no evidence in the record that the prior art had the basic and novel characteristics of the composition claimed by patent applicant. The CCPA in de Lajarte clearly said: we can find no justification for placing the burden on applicant to conduct experiments to determine the insulating properties of the colored glass disclosed by Lyle. Thus, the CCPA in de Lajarte seems to say the opposite of what the Board attributed to de Lajarte.
The de Lajarte case was cited in the obviousness case In re Dillon, 919 F.2d 688 (CAFC 1990) within the dissent by Judge Newman :
In In re De Lajarte, 52 C.C.P.A. 826, 337 F.2d 870, 143 USPQ 256 (CCPA 1964) the same principle was applied to a new composition. The CCPA held that similarity of chemical composition alone did not place on the applicant the obligation of proving that the prior art composition did not possess the applicant's newly discovered property and utility:
In the total absence of evidence in the record to indicate that the amber glass disclosed by Lyle would be expected to have desirable electrical insulating properties, we can find no justification for placing the burden on applicant to conduct experiments to determine the insulating properties of the colored glass disclosed by Lyle.
Id. at 874, 143 USPQ at 259. As in the modern usage of the prima facie case, the court held that the prior art must suggest both similar structure and property before the burden shifted to the applicant to prove unexpected differences. De Lajarte's claims were to a novel glass composition having insulating properties. The prior art (Lyle) reference showed a glass composition having what the examiner called "very slight differences" in structure, and the properties of amber color and durability. The court said:
If one were making a colorless glass free of carbon and sulfur, there would be little reason for using the Lyle formula since it was primarily designed to enhance color stability. In the absence of any showing why it would be obvious to modify Lyle's glass, a "103 rejection" must be reversed.
Id. at 875, 143 USPQ at 259.
**When omitting elements from a combination known in the prior art, the wise applicant should demonstrate a benefit not reported for the prior art combination.
**Separately, it might be questioned whether or not de Lajarte is in tension with cases such as In re Best.