Ex Parte Fong et al

Patent Trial and Appeal BoardAug 16, 2013

11887169 (P.T.A.B. Aug. 16, 2013)

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. 11/887,169 09/26/2007 Howard Lam-Ho Fong TH2908 US 2254 23632 7590 08/16/2013 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER KEYS, ROSALYND ANN ART UNIT PAPER NUMBER 1621 MAIL DATE DELIVERY MODE 08/16/2013 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 HOWARD LAM-HO FONG, THOMAS HOWARD JOHNSON and THOMAS CARL SEMPLE __________ Appeal 2012-003341 Application 11/887,169 Technology Center 1600 __________ Before ERIC GRIMES, ERICA A. FRANKLIN, and ULRIKE W. JENKS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to processes for producing derivatives of alkyl halides. The Patent Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-003341 Application 11/887,169 2 STATEMENT OF THE CASE Claims 1-4, 6-17 and 23 are on appeal. Claim 1 is representative and reads as follows: 1. A process which comprises reacting alkyl halides with a nucleophilic material in the presence of a homogeneous catalyst system to produce derivatives of alkyl halides, wherein the homogeneous catalyst system comprises at least one metal or metal compound selected from the group consisting of Groups VIII, IB, and IIB of the periodic table of the elements, CAS version, which has the ability to form metal-halogen bonds. The Examiner rejected claims 1-4, 6-17 and 23 under 35 U.S.C. § 103(a) as unpatentable over Harris,1 Horváth,2 and Hayes.3 Claims 2-4, 6-17 and 23 have not been argued separately and therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). OBVIOUSNESS The Examiner found that Harris taught a process for preparing ethers comprising reacting a polyglycerol or polyhydric alcohol and a lipophile or alkyl halide in the presence of a caustic soda as a catalyst, or substances other than caustic soda such as other basic materials or condensing agents, e.g., zinc oxide or zinc chloride. (Ans. 5.) The Examiner relied on the teachings of Horváth and Hayes to meet the limitations of certain dependent claims. (Id.) Appellants contend: Harris does not teach generally that the catalyst useful for polymerization is also suitable for the etherification reaction. 1 US Patent No. 2,302,121 issued to Benjamin R. Harris, Nov. 17, 1942. 2 US Patent No. 5,276,226 issued to István T. Horváth, Jan. 4, 1994. 3 US Patent No. 4,706,749 issued to Michael E. Hayes et al., Nov. 17, 1987. Appeal 2012-003341 Application 11/887,169 3 Harris teaches one embodiment of the invention where excess caustic soda can be added in the polymerization reaction step, and then it is already present in the etherification step. Harris does not teach that this is generally applicable to all possible polymerization catalysts, and particularly, there is no teaching in Harris as to the suitability of a “homogeneous catalyst system [that] comprises at least one metal or metal compound selected from the group consisting of Groups VIII, IB, and IIB of the periodic table, CAS version.” There is no teaching or suggestion from Harris that would have led one of ordinary skill in the art to arrive at the invention as claimed …. (App. Br. 3-4.) The Examiner responds, although Harris does not expressly teach the use of a homogeneous catalyst system [that] comprises at least one metal or metal compound selected from the group consisting of Groups VIII, IB, and IIB of the periodic table, CAS version for the etherification step there is a clear suggestion in Harris that the catalysts used in the polymerization step may also be used in the etherification step …. (Ans. 6.) After considering all the evidence and arguments, we conclude that the record supports a conclusion of prima facie obviousness. In particular, we agree with the Examiner that Harris provides a suggestion that the catalysts disclosed for the polymerization step may also be used as catalysts in the etherification step. Harris taught a method for preparing polyglycerol ethers comprising polymerizing glycerol to a desired molecular magnitude by heating glycerol by itself or in the presence of a catalyst, reducing the content or freeing the polyglycerol of unpolymerized glycerol, if any be present, and finally etherifying the polyglycerol material with an alcohol containing a minimum Appeal 2012-003341 Application 11/887,169 4 of six carbon atoms or a phenol or with alky halides, by reacting the two types of reactants with or without the presence of an etherification catalyst or condensing agent. (Harris 2, left col., ll. 13-29.) In Example 7, Harris taught that the catalyst used in the polymerization step of its process may be caustic soda or substances other than caustic soda, including “zinc oxide . . . and other alkaline and potentially alkaline materials” (id. at 3, left col., ll. 31-43). Zinc is a Group IIB metal compound (see Ans. 6). We agree with the Examiner that this teaching provides a suggestion that caustic soda and zinc oxide are interchangeable as polymerization catalysts. (See id.) Harris also taught “adding two equivalents of caustic soda or the like to glycerol in which case polymerization proceeds rapidly at lower temperatures. Then, with alkali already present, the ethers may be made simply by the addition of the desired alkyl halide.” (Harris 3, right col., ll. 11-17.) In other words, the “alkali” of the polymerization step, e.g., caustic soda, zinc oxide, etc., is “already present” as the catalyst for the etherification step. Thus, we find that a skilled artisan would have understood from this teaching that the compounds disclosed by Harris as catalysts in the polymerization step may also be used as catalysts in the etherification step. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988)(Prima facie obviousness is supported by the evidence when some objective teaching in the prior art would have led the individual to combine the relevant teachings to arrive at the claimed invention.); see also Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))(In an obviousness inquiry, all disclosures of the prior art must be considered.) Appeal 2012-003341 Application 11/887,169 5 SUMMARY We affirm the rejection of claims 1-4, 6-17 and 23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc