Ex Parte Dubois

Patent Trial and Appeal Board

Apr 29, 2016

13055255 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/055,255 0112112011
21839 7590 05/03/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jean-Luc Dubois
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0078840-000026 4161
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-LUC DUBOIS 1
Appeal2014-002426
Application 13/055,255
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1-10 and 14-17, which are all of the
claims pending in the above-identified application. A hearing was held on
April 7, 2016, a transcript of which will be entered into the electronic record
in due course. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is said to be Arkema France. Appeal Brief filed
August 26, 2013 ("App. Br.") at 2.
2 Final Action entered February 5, 2013 ("Non-Final Act.") at 1-8 and the
Examiner's Answer entered November 8, 2013 ("Ans.") at 2-8.
Appeal2014-002426
Application 13/055,255
STATEMENT OF THE CASE
The subject matter on appeal is directed to "a process for the
manufacture of vinyl propionate from alcohols resulting from the
fermentation of renewable starting materials." Spec. 1, 11. 4-8. The
renewable starting materials can be "a natural resource, for example animal
or plant resource, the stock of which can be reconstituted over a short period
on the human scale." Spec. 4, 11. 17-19. Details of the appealed subject
matter are recited in representative claim 1, 3 which is reproduced below
from the Claims Appendix of the Appeal Brief:
1. A process for the manufacture of vinyl propionate comprising the
stages:
a) fermentation of renewable starting materials to produce a first
product comprising ethanol or a mixture of alcohols comprising ethanol and
optionally purification of said first product;
b) dehydration of the first product to produce a second product
comprising ethylene or a mixture of alkenes comprising ethylene and
optionally purification of the second product;
c) production of acrylic acid from renewable starting materials,
d) hydrogenation of the acrylic acid in the presence of molecular
hydrogen to produce propanoic acid, wherein at least one purification stage
is carried out during stage d),
e) reacting, the second product and the propanoic acid to produce a
third product comprising vinyl propionate via acyloxylation of the second
product,
f) isolation and optionally purification of the vinyl propionate.
3 As a preliminary matter, we note that Appellant does not separately argue
the individual claims on appeal and relies upon the same arguments for the
patentability of all of the rejected claims on appeal. App. Br. 4-9.
Accordingly, we decide the appeal as to all the claims on appeal on the basis
of claim 1, the sole independent claim in the above-identified application.
37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Appeal2014-002426
Application 13/055,255
App. Br., Claims Appendix 1.
The Examiner has maintained the following grounds of rejection4 :
1. Claims 1-3, 5-10, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kronig, 5 Morschbacker, 6
Dubois,7 and Boehling8;
2. Claims 1, 4-10, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kronig, Morschbacker,
Kuppinger, 9 and Boehling; and
4 At page 8 of the Answer, the Examiner has withdrawn the rejection of
claim 5 under 35 U.S.C. § 112, second paragraph, set forth in the Final
Action entered into the record on February 5, 2013.
5 US 3, 600, 4 2 9 issued in the name of Kronig et al. on August 1 7, 1971
("Kronig").
6 WO 2008/067627 A2 published in the name of Morschbacker on June 12,
2008. Appellant does not question the Examiner's reliance on US
2010/0069691 .,A .. l published in the name ofl\1orschbacker on l\1arch 18,
2010 ("Morschbacker '691") as the English translation of WO 2008/067627
A2. Compare Ans. 2 with App. Br. 6-21 and Reply Brief filed December
27, 2013 ("Reply Br.") at 1-4.
7 WO 2006/114506 Al published in the name of Dubois et al. on November
2, 2006. Appellant does not question the Examiner's reliance upon US
2008/0183013 A 1 published in the name of Dubois et al. on July 31, 2008
("Dubois '013") as the English translation of WO 2006/114506 Al.
Compare Ans. 2 with App. Br. 6-21 and Reply Br. 1--4.
8 DE 102 20 752 Al published in the name ofBoehling et al. on June 18,
2003. Our reference to this German Patent Application publication is to the
English translation of record ("Boehling") submitted by Appellant along
with their Appeal Brief on August 26, 2013.
9 WO 2008/023039 Al published in the name of Kuppinger et al. on
February 28, 2008. Appellant does not question the Examiner's reliance
upon US 8,198,481 B2 issued in the name ofKuppinger et al. on June 12,
2012 ("Kuppinger '481") as the English translation of WO 2008/023039 Al.
Compare Ans. 5 with App. Br. 6-21 and Reply Br. 1--4.
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Application 13/055,255
3. Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Kronig, Morschbacker, Dubois, Boehling,
and Matthai. 10 Final Act. 2-8; Ans. 2-8; and App. Br. 5.
DISCUSSION
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we find that
Appellant has not identified reversible error in the Examiner's determination
that the applied prior art would have rendered the subject matter recited in
claims 1-10 and 14-17 obvious to one of ordinary skill in the art within the
meaning of35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's
§ 103(a) rejections of the above claims for the reasons set forth in the Final
Action and the Answer. We add the following primarily for emphasis.
The Examiner has found, and Appellant does not dispute, that Kronig,
like Appellant, discloses reacting ethylene and propanoic acid to produce
vinyl propionate via acyloxylation of ethylene and then isolating or
recovering the resulting vinyl propionate. Compare Final Act. 3 and Ans. 2-
3 with App. Br. 6-22 and Reply Br. 1--4. The Examiner has also found, and
Appellant does not dispute, that Morschbacker teaches that ethylene, one of
the starting materials of Kronig, can be provided from a renewable natural
raw material via fermenting sugar cane juice corresponding to the recited
renewable natural raw material to produce, inter alia, ethanol and then
10 DE 3437920 Al published in the name of Matthai et al. on April 17, 1986
("Matthai"). In reference to Matthai, the Examiner refers to its English
abstract of record. Ans. 8.
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Appeal2014-002426
Application 13/055,255
dehydrating ethanol to form ethylene. Compare Final Act. 4 and 6-7 and
Ans. 3--4 and 9 with App. Br. 6-22 and Reply Br. 1--4; see also
Morschbacker ,-i,-i 44--45 and 101-102 and Fig. 1. Further, the Examiner has
found, and Appellant does not dispute, that Boehling teaches that propionic
acid, the other starting material of Kronig, may be provided by purifying or
separating propionic acid resulting from hydrogenation of acrylic acid,
which according to Dubois or Kuppinger, can be produced from glycerol or
a biological material, which corresponds to the recited renewable natural raw
material. Compare Final Act. 4-7 and Ans. 3--4 and 9 with App. Br. 6-22
and Reply Br. 1--4; see also Boehling, p. 1-3, Dubois '013 ,-i,-i 1 and 19, and
Kuppinger, '481 Abstract and Fig. 1. Moreover, the Examiner has found,
and Appellant does not dispute, that:
Morschbacker teaches that ["the] preferred use of products
obtained from natural products over those [obtained] from
fossil resources or [sic., sources of] raw materials has been
gaining increasingly wide acceptance as [constituting] a viable
form of reducing the growing concentration of [carbon dioxide]
in the atmosphere and thereby combating in an effective
manner [the] intensification of the greenhouse effect["]
(paragraph 0011 ). Dubois teaches that acrylic acid can be
prepared from glycerol. Glycerol is obtained from the
methanolysis of plant oils and is a natural product that is
environment friendly, is available in [a] large quantity and may
be stored and transported without difficulty (paragraph 0006).
Compare Ans. 9 with App. Br. 6-22 and Reply Br. 1--4; see also Final
Act. 4-7 (emphasis in original).
Thus, notwithstanding Appellant's argument to the contrary, we
concur with the Examiner that one of ordinary skill in the art would have
been led to employ ethylene produced in the manner suggested by
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Application 13/055,255
Morschbacker and propionic acid produced in the manner suggested by the
collective teachings of Boehling and either Dubois 'O 13 or Boehling and
Kuppinger '481 as ethylene and propionic acid used in Kronig's method of
preparing vinyl propionate to arrive at the claimed invention, with a
reasonable expectation of successfully producing vinyl propionate in an
environmentally friendly manner. KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) ("[W]hen a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
In reaching this determination, we have considered the applied prior
art as a whole, including Appellant's argument (App. Br. 10-11) that:
Boehling et al. contemplates exclusively an integrated
process that includes:
( 1) the partial dehydrogenation of propane to form a
mixture (A) including molecular hydrogen, propene,
and uncoverted propane;
(2) the partial oxidation of propane (added as mixture
(A)) to form a mixture (B) including acrylic acid,
hydrogen, and propane;
(3) the hydrogenation of acrylic acid, with hydrogen
formed in step (1), to form a mixture (C) including
propionic acid; and
(4) the separation ofpropionic acid, and the recycle of
the residual gas to step (1 ). See English-language
translation of Boehling et al., Abstract and [p ]age 3,
lines 36 to page 4, line 27.
Boehling et al. specifically teaches that the "particular
economic attraction of the process according to the invention is
that the catalytic dehydrogenation of the comparatively
inexpensive raw material propane provides both the reactivity
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Application 13/055,255
for the conversion of acrylic acid and the hydrogen required
for the subsequent hydrogenation of acrylic acid or esters
thereof to prop ionic acid or esters thereof." See English-
language translation of Boehling et al., page 4, lines 29-35.
(Emphasis original.)
Although Boehling prefers to employ propane to produce both hydrogen and
acrylic acid to utilize internally produced hydrogen for hydrogenating
acrylic acid in order to avoid the cost associated with the use of external
hydrogen, the Examiner has found that hydrogenating acrylic acid with
external hydrogen 11 or commercially available hydrogen was known at the
time of the invention. See Final Act. 7; Ans. 11; Boehling, pp. 1-2. On this
record, Appellant does not identify anything in the applied prior art,
including Boehling, that would have dissuaded one of ordinary skill in the
art from arriving at the claimed invention as indicated supra. See also
Orthopedic Equipment Co. et al. v. United States, 702 F.2d 1005, 1013 (Fed.
Cir. 1983) (explaining that "the fact that the two disclosed apparatus would
not be combined by businessmen for economic reasons is not the same as
saying that it could not be done because skilled persons in the art felt that
there was some technological incompatibility that prevented their
combination. Only the latter fact is telling on the issue of nonobviousness.");
In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983)(explaining that
"additional expense associated with the addition of inhibitors would not
discourage one of ordinary skill in the art").
11 According to paragraph 20 of Morschbacker, hydrogen can also be
produced from lignocellulosic materials that are encompassed by the
renewable natural raw material recited in the claims on appeal.
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Application 13/055,255
Accordingly, on this record, we find no reversible error in the
Examiner's decision rejecting claims 1-10 and 14-17 under 35 U.S.C.
§ 103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims
1-10 and 14-17 under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
8