Ex Parte Alemany et al

Patent Trial and Appeal BoardJul 15, 2014

11721827 (P.T.A.B. Jul. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/721,827 06/15/2007 Aurelie Alemany 13111-00229 3700 23416 7590 07/16/2014 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP (DE OFFICE) 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER CAMPBELL, NATASHA N. ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 07/16/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte AURELIE ALEMANY, MAXIMILIAN VICARI, TANJA KIRCHNER, and FRANK STEGLICH ________________ Appeal 2014-006426 Application 11/721,827 Technology Center 1700 ________________ Before FRED E. McKELVEY, JEFFREY T. SMITH, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 10, 11, 14-18, and 20-29. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to “a process for cleaning an apparatus to remove deposits from a process for the recovery of purified NMP [N-methylpyrrolidone].” Spec. 1. Claim 10 is illustrative (key limitations in dispute italicized): A process for cleaning an apparatus to remove deposits from a process for the recovery of purified N-methylpyrrolidone (NMP) which comprises evaporating NMP from a Appeal 2014-006426 Application 11/721,827 2 contaminated NMP stream which is obtained in a process for the extractive separation of acetylene from the reaction mixture of a partial oxidation of hydrocarbons after expulsion of the acetylene as a gas, wherein hot water is passed into the apparatus and is stirred in order to remove deposits, wherein stirring is effected for at least 5 minutes, wherein an aqueous solution with a viscosity of from 1 to 5 mPa.s is taken off from the apparatus, wherein all of the deposits are removed without a manual removal step. Claim 17, which depends from claim 10, is directed to the weight percent of deposit material and NMP taken off from the apparatus in an aqueous solution. Claim 18 also depends from claim 10 and specifies that the apparatus is “a stirred kettle.” The Examiner relied on the following references in addition to the Applicants’ admitted prior art (AAPA) in paragraphs 4 and 5 on page 1 of the Specification in rejecting the appealed subject matter: Ash et al. US 5,393,865 Feb. 28, 1995 Engel US 1,820,608 Aug. 25, 1931 Wojtech et al. US 4,626,605 Dec. 2, 1986 Appellants appeal the rejection of claim 10 under 35 U.S.C. § 112, first paragraph, as based on a disclosure which is not enabling, and the rejections of claims 10, 11, 14-18, and 20-29 under 35 U.S.C. § 103(a) as unpatentable over the combination of AAPA in view of Ash, Engel, and Wojtech. App. Br. 4. In the Answer, the Examiner withdraws the Section 112 rejection and designates the Section 103 rejections as new grounds of rejection based on modifications by the advisory action dated November 7, 2013. Ans. 2. Appeal 2014-006426 Application 11/721,827 3 OPINION1 The dispositive issue for the prior art rejections is: Have Appellants established that the Examiner erred in determining that the subject matter of claims 10, 17, and 18 would have been obvious in view of the prior art disclosures of removing residual NMP by stirring and washing with hot water without a manual removal step, reusing the cleaning solution, performing extractions in a kettle, and that one skilled in the art would have optimized conditions of stirring duration to enhance cleaning efficiency? After review of the arguments and evidence presented by both Appellants and the Examiner, we affirm the stated rejections. Regarding claims 10 and 17, the Examiner finds, and Appellants do not contest otherwise, that Ash discloses washing a product in hot water in order to remove residual NMP. (Ans. 3-4; App. Br. 8-15.) Combined with Appellants’ admitted prior art that it was known to clean an apparatus by pre-evaporating NMP from a contaminated NMP stream by passing water into the apparatus and stirring to remove deposits (Specification, pages 1-2), the Examiner determines “it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of the prior art by passing hot water through the apparatus to wash away residual NMP without a manual removal, as suggested by Ash” (Ans. 4). The Examiner also finds that “Engel teaches a method of cleaning the interior of an apparatus by passing washing fluid through in order to wash off solid 1 Appellants have not presented separate substantive arguments addressing claims 10, 11, 14-16, and 20-29. In accordance with 37 C.F.R. § 41.37(c)(1)(iv) (2013), we select claim 10 as representative a claims 11, 14-16, and 20-29 will stand or fall with our analysis of claim 10. Appeal 2014-006426 Application 11/721,827 4 deposits adhering to the apparatus” and “that solution comprising the residue is taken off the apparatus for the purposes of reusing the solution.” Id. The Examiner determines that “it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the prior art methods by collecting the spent rinsing solution, as suggested by Engel, in order to recover and reuse chemical agents present in the rinsing fluid.” Id. The Examiner acknowledges that “the AAPA does not expressly disclose the length of time for stirring” and determines “it would have been obvious to optimize this time to achieve the claimed time period in order to enhance the cleaning efficiency.” Id. Regarding claim 18, the Examiner further finds that Wojtech “teaches that it is well known to perform similar chemical extraction in a stirred kettle” (Ans. 6). The Examiner determines “it would have been obvious to one of ordinary skill in the art at the time of the invention to apply the prior art methods to a stirred kettle, in order to clean the kettle after the extraction process.” Id. Appellants argue that “a person of ordinary skill in the art would not have expected that the instant process would have been possible without a manual removal step” and that the Declaration of Dr. Maximilian Vicari dated July 5, 2013 (“Vicari Declaration”) supports its argument. App. Br. 9. Appellants further argue that the Vicari Declaration evidences that increasing the temperature of the water used would not be expected to result in removal of all of the solid organic residue such that manual removal could be avoided and is said to be supported by Ullmann’s Encyclopedia of Industrial Chemistry “‘which shows insolubility of the [polymers and Appeal 2014-006426 Application 11/721,827 5 oligomers of acetylene] materials regardless of temperature of water.’” Id. at 10 (quoting Vicari Declaration). Appellants also argue that the Examiner has not made out a prima facie case of obviousness because Engel is a wholly unrelated process because it removes foreign particles such as dirt from oil barrels and none of the references relied upon teaches the claimed aqueous solution with a viscosity of from 1 to 5 mPa.s is taken off from the apparatus. Id. at 11-12. Similarly, Appellants argue that Wojtech, which uses a stirred kettle, relates to a wholly different process than that claimed because it is directed to a process for extracting phenols from aqueous solutions. Id. at 15. In response to the arguments, the Examiner finds that the Vicari Declaration is insufficient to overcome the obviousness rejection because it “relies on the evidence concerning the general insolubility of polymers and oligomers of acetylene that are left behind after extraction of NMP” which is not an exhaustive list of the residual component make up. Ans. 7. The Examiner further finds that “one of ordinary skill in the art would have been motivated to raise the water temperature – through routine experimentation – to dissolve other residual components remaining in the apparatus” and the “increase in temperature would have then yielded the process as claimed . . . including removal of all deposits from the apparatus without a manual removal step.” Id. at 8. Regarding the viscosity and composition of the aqueous solution resulting from cleaning the deposits with hot water in accordance with Ash, the Examiner’s position is that is an inherent property of the operation. Id. The Examiner also finds that Engel and Wojtech are related to the claimed process because Engel is “related to the art of cleaning Appeal 2014-006426 Application 11/721,827 6 an apparatus” (id.) and Wojtech is related to “facilitating chemical extractions” (id. at 9). In the Reply Brief, Appellants contend “the Examiner has provided no reason or rationale why a person of ordinary skill in the art would have understood it would be possible to remove all deposits after an NMP cleaning process without requiring a manual removal step.” Reply Br. 2. Appellants assert that Ash “has nothing to do with treating an apparatus for recovery of purified NMP” and that “there is nothing in that reference to suggest that all residual NMP is removed.” Id. at 3. According to Appellants “the specific chemistry of the poly(arylene sulfide) would have to be considered” and that the Vicari Declaration shows that “a person of ordinary skill in the art would have expected, to the contrary, that such removal would not have been effective in a process for purifying NMP.” Id. Appellants assert that “[w]ithout removing the polymers and oligomers, it cannot be said that all deposits are removed as required by the instant claims.” Id. at 4. Claim 10 We agree with the Examiner that the AAPA in view of Ash and Engel suggest the removal of an NMP-containing residue using hot water, stirring, and reusing the cleaning solution based on the evidence in this record. Appellants do not dispute that it was known from the AAPA “to clean an apparatus by pre-evaporating NMP from a contaminated NMP stream and passing water into the apparatus and stirring to remove deposits” as found by the Examiner. See Ans. 3; see generally App. Br.; see generally Reply Br. Appellants also do not dispute the Examiner’s rationale for modifying the AAPA to optimize the time for stirring to enhance the cleaning efficiency. Appeal 2014-006426 Application 11/721,827 7 See Ans. 4; see generally App. Br.; see generally Reply Br. Appellants also do not dispute that Ash teaches a process that removes NMP residue using hot water, but assert “the specific chemistry of the poly(arylene sulfide) [in Ash’s process wherein NMP is used as a polar organic compound] would have to be considered” to assess whether all residual NMP is removed by the process of Ash. Reply Br. 2-3. While Appellants argue that Ash is silent on whether all residual NMP is removed without a manual removal step (id. at 3), Appellants do not direct us to any evidence in this record that such a manual removal step would be necessary in Ash’s process. Indeed, Appellants acknowledge that the chemistry of poly(arylene sulphide) would have to be considered. See id. Regarding Engel, Appellants do not dispute the finding that the reference teaches reusing chemical agents present in a rinsing fluid (see Ans. 4). Reply Br. 5-6. Therefore the evidence of record supports the Examiner’s prima facie obviousness rejection of claim 10. Appellants’ arguments are not persuasive to overcome prima facie obviousness because the residue from the process for the recovery of purified NMP is a composition of 35% by weight NMP and 65% by weight polymers of acetylene according to AAPA. See Spec. 1:34-36; Vicari Declaration ¶ 6. Appellants have not directed us to any evidence in this record that removal of such a residue composition using the hot water of the Ash process would have been unexpected. Rather, as pointed out by the Examiner, the Vicari Declaration is based on “evidence concerning the general insolubility of polymers and oligomers of acetylene that are left behind after extraction of NMP (e.g. paragraph 8 and 9).” Ans. 7. Indeed, the Vicari Declaration states “since more than 40 years it’s known that polymers and oligomers of acetylene, which are contained within the solid Appeal 2014-006426 Application 11/721,827 8 components left behind after extraction of NMP, are generally not soluble in the washing water.” Vicari Declaration ¶ 9 (emphasis added) (citing Ullmann’s Encyclopedia of Industrial Chemistry (7th Edition (2010), Acetylene Pages 292-293). The Vicari Declaration concludes “[i]n light of this, it is surprising that the increase in temperature described in the ‘827 application allows the process to proceed to completion without manually removing solid residues.” Id. at ¶ 10. The Vicari Declaration does not state why one of ordinary skill in the art would focus on the general solubility of only one component of the residue rather than all components. See Ans. 7-8. The Vicari Declaration is silent as to the expected role of NMP and any other component in the residue to the solubility of the residue in hot water. As stated above, the residue comprises 35% by weight NMP and 65% by weight polymers of acetylene. It is not disputed that NMP is soluble in water. Thus, a person of ordinary skill in the art would have reasonably expected that the residual solid (containing NMP) would have been dispersed in water which is agitated by stirring. We agree with the Examiner that the Vicari Declaration is not sufficient to overcome prima facie obviousness over the combination of AAPA, Ash and Engel because it does not address the other components of the residue. Moreover, the evidence of record is insufficient to determine if the agitation by stirring or the water temperature causes the alleged unexpected result because we have not been directed to evidence that compares stirred hot water with stirred water of other temperatures or non- agitated hot water. In addition, the pages of the Ullmann’s Encyclopedia relied upon by Appellants and the declarant states that NMP “dissolves all Appeal 2014-006426 Application 11/721,827 9 the acetylene” and Ash indicates that NMP residue is removed using hot water. Accordingly, absent any argument from Appellants as to specific, technical reasons why, for example, the hot water process of Ash would not have been expected to remove all of the residual solid NMP containing deposits and why the water soluble components of the residue composition would not have been expected to change the chemistry of the water solubility of the residue as a whole, we fail to see how Appellants have shown that the Examiner has committed reversible error. Claim 17 Appellants’ argument that Engel does not suggest recovering the specifically claimed rinsing fluid containing “about 2% by weight of NMP” is not persuasive because the Examiner finds “[t]he viscosity and composition of the aqueous solution is an inherent property of the aqueous solution resulting from subjecting the adhered material to the hot water” (Ans. 8) and Appellants have not directed us to any technical evidence to demonstrate that it would not. See Reply Br. 5-6. Indeed, Appellants concede that “[t]he fact that a wash solution recovered from a cleaned apparatus would have had some of the residue sought to be removed is not controversial” (id. at 5). Appellants also do not dispute that one of ordinary skill in the art would have modified the prior art process to enhance the cleaning efficiency. See Ans. 4; see generally App. Br.; see generally Reply Br. Therefore we are not persuaded by Appellants that the Examiner erred in rejecting claim 17 as obvious over the cited art. Appeal 2014-006426 Application 11/721,827 10 Claim 18 Regarding Wojtech, Appellants do not dispute the Examiner’s finding that the reference teaches the use of a stirred kettle in performing chemical extractions (see Ans. 6). Reply Br. 6. Appellants argue there is no reason to combine and no predictability in combining the kettle of Wojtech with the claimed process. Reply Br. 6. We are not persuaded by Appellants’ argument because the AAPA generally describes a stirred container and Wojtech evidences that the use of a stirred kettle in chemical extractions was well known. For the foregoing reasons, we affirm the rejection of claims 10, 11, 14-18, and 20-29 under 35 U.S.C. § 103(a) as being unpatentable over the prior art of record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED cdc