Ex Parte Matsumoto et al

Patent Trials and Appeals BoardMar 26, 2019

14977922 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/977,922 12/22/2015 Shigeaki Matsumoto 38834 7590 03/28/2019 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 Leesburg Pike SUITE 7500 Tysons, VA 22182 UNITED ST A TES OF AMERICA 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. P25970USOO 1056 EXAMINER SEIFU, LESSANEWORK T ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIGEAKI MATSUMOTO, KEISUKE ITO and MASA YOSHI MATSUNO Appeal2018-005774 Application 14/977 ,922 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant2 appeals from the Examiner's decision to reject claim 1 under 35 U.S.C. Â§ 103 as obvious over 1 In explaining our Decision, we cite to the Specification of February 2, 2016 (Spec.), Final Office Action of July 6, 2017 (Final), Appeal Brief of November 29, 2017(Appeal Br.), and Examiner's Answer of March 9, 2018 (Ans.). 2 Appellant is the applicant under 37 C.F.R. Â§ 1.46, Osaka Organic Chemical Industry Ltd., which is also identified as the real party in interest. Appeal Br. 2. Appeal2018-005774 Application 14/977 ,922 Otsuka3 in view of Hershberger4 and Scott5 and claims 1 and 2 under 35 U.S.C. Â§ 103 as obvious over Ida6 in view of Hershberger and Scott. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. The claims are directed to a system (apparatus) for producing a (meth)acrylate. Figure 1 depicts the apparatus of claim 1. The apparatus includes a Reactor Al having a distillation column 2 and a Distillation Apparatus B3 having a distillation column 4. Spec. ,r 43. The apparatus is shown in Appellant's annotated Figure 1 (Appeal Br. 3), which we reproduce below: Reactor A Distillation Apparatus B1 Annotated Figure 1 is a schematic drawing showing a transesterification apparatus annotated with "Reactor A" and "Distillation Apparatus B" labels and with the bolding of pipe 1 Oe 7 3 Otsuka et al., US 7,411,086 B2, issued Aug. 12, 2008. 4 Hershberger et al., US 2005/0107629 Al, published May 19, 2005. 5 Scott, US 4,013,521, issued Mar. 22, 1977. 6 Ida et al., JP 08-268938, published Oct. 15, 1996 (as translated). 7 Superscript "1" after "B" is a footnote. 2 Appeal2018-005774 Application 14/977 ,922 As can be seen from Appellant's bolding of pipe lOe, the existence of this pipe is central to the dispute in this appeal. Pipe 1 Oe is connected to the lower part of distillation apparatus Bat 3 (called B3 in the Specification) to allow reflux of residue in the distillation apparatus B3 to be sent to distillation column 2 of reactor Al. Spec. ,r 53. This residue contains water and an alcohol byproduct from the transesterification reaction within reactor Al. Spec. ,r 90. More specifically, the process that occurs in the apparatus is as follows. A transesterification of (meth)acrylate and an alcohol is carried out in reactor Al. Spec. ,r 44. The byproduct vapor, which contains an azeotrope of a solvent with byproduct alcohol, travels from distillation column 2 to condenser 6 to switching apparatus 7 where a portion of the condensate is fed through line 5d to separation apparatus 8 such as a decanter. Spec ,r,r 54--55. Water is added to the condensate so it separates into two layers in separation apparatus 8. Spec. ,r 56. The lower layer within separation apparatus 8 mainly contains byproduct alcohol and water, but also contains some solvent and (meth)acrylate. Spec. ,r 62. This lower layer is fed via pipe 5f to distillation apparatus B3 where it is distilled to generate a vapor containing the (meth)acrylate, the byproduct alcohol, and the solvent before the temperature is raised to produce a further vapor of byproduct alcohol. Spec. ,r 64. Both vapors are removed from the top of the distillation column 4. Spec. ,r 64. The residue in the bottom of distillation apparatus B3 travels via pipe 1 Oe back to pipe 5d. Spec. ,r 53. The residue contains water and byproduct alcohol. Spec. ,r 90. In the embodiment of Figure 2, a further distillation apparatus CI4, which can be the same as the distillation apparatus B3 of Figure 1, is added 3 Appeal2018-005774 Application 14/977 ,922 to separate the water from the alcohol. Spec. ,r,r 90-92. The water is then fed via pipe 18e to pipe 5d. Claim 2 is directed to the embodiment of Figure 2. As we stated above, it is the pipe 1 Oe in Figure 1 that is at the center of the dispute in this appeal. The analogous pipe 18e in Figure 2 is the subject of a related dispute. We reproduce claim 1 below with the limitation of most interest highlighted and reference numerals from Figure 1, to further illustrate: 1. A system for producing a (meth)acrylate used in producing a (meth)acrylate by transesterification, comprising a reactor A having a distillation column and a distillation apparatus B having a distillation column, wherein an upper part of the distillation column of the reactor A is connected with a condensing apparatus through a pipe; the condensing apparatus is connected with the upper part of the distillation column through a switching apparatus with a pipe for refluxing a part of a condensate obtained in the condensing apparatus to the upper part of the distillation column; and the condensing apparatus is connected with a liquid separation apparatus through a switching apparatus with a pipe for feeding the condensate remaining in the condensing apparatus to the liquid separation apparatus; an upper part of the liquid separation apparatus is connected with the distillation column through a pipe for refluxing an upper layer of the condensate separated by the liquid separation apparatus to the distillation column; and a lower part of the liquid separation apparatus is connected with the distillation apparatus B through a pipe for feeding a lower layer of the condensate separated by the liquid separation apparatus to the distillation apparatus B; an upper part of the distillation column of the distillation apparatus B is connected with a condensing apparatus through a 4 Appeal2018-005774 Application 14/977 ,922 pipe; the condensing apparatus is connected with the upper part of the distillation column through a switching apparatus with a pipe for refluxing a part of a condensate obtained in the condensing apparatus to the upper part of the distillation column; and the condensing apparatus is connected with a collecting unit for collecting the condensate remaining in the condensing apparatus through a switching apparatus with a pipe for feeding the remaining condensate to the collecting unit; and a lower part of the distillation apparatus B is connected with a pipe [5d] between the switching apparatus [7] and the liquid separation apparatus [8] in the reactor A through a pipe [JOe] for refluxing a residue existing in the distillation apparatus B to the distillation column of the reactor A. Appeal Br. 20-21 ( claims appendix). OPINION Turning first to the Examiner's rejection of claim 1 as obvious over the combination of Otsuka, Hershberger and Scott, the issue is: Has Appellant identified a reversible error in the Examiner's finding of a reason or suggestion within the prior art to connect a distillation apparatus B to the lower layer draw out line (12) of Otsuka to recover byproduct alkyl alcohol from the water in that line and recycle the water to the water supply line (9) of Otsuka? Appellant has not identified such an error. Thus, for the reasons provided by the Examiner in the Final and the Answer, we sustain the rejection. We add the following primarily for emphasis. There is no dispute that Otsuka teaches an apparatus for producing a (meth)acrylate that includes the reactor (1 ), distillation column (3), condensing apparatus ( 5), switching apparatus ( 6), liquid separation 5 Appeal2018-005774 Application 14/977 ,922 apparatus ( decanter 10) with the pipe connections required by claim 1. Compare Final 3--4, with Appeal Br. 6-7. There is further no dispute that, as found by the Examiner, Otsuka adds water at a location between switching apparatus 6 and liquid separation apparatus 10 through water supply line 9. Compare Final 3, citing Otsuka col. 7, 11. 9-32 and Fig. 2, with Appeal Br. 6. As found by the Examiner, Otsuka's liquid separation apparatus (decanter 10) is connected to lower layer draw out line 12 and draws out the lower aqueous phase, which is mostly composed of water and byproduct alcohol. Final 3, citing Otsuka col. 4, 11. 41-59; see also col. 7, 11. 23-32 and Fig. 2. As acknowledged by the Examiner, Otsuka does not detail where draw out line 12 leads. Final 4; Otsuka col. 7, 11. 23-32 and Fig. 2. But the Examiner concludes it would have been obvious to connect draw out line 12 to a distillation column, like Appellant's distillation column B, and strip out the alcohol and other light ends from the water and send the water back to line 9 because "it is typical in the art to pass a process stream comprising an aqueous phase which is mainly composed of water and an alcohol to a distillation apparatus [such as stripper (12) of Hershberger] to recover the alcohol from the aqueous phase" and "it is typical in the art to reuse water withdrawn from the bottoms of the distillation apparatus B as a source of process water." Final 4 ( citing Hershberger ,r,r 27, 28, 31 and Fig. 1 and Scott col. 2, 11. 20-26 and Fig). Appellant does not dispute the Examiner's findings regarding what is typical for distilling aqueous alcohol streams and recycling the separated streams. Appeal Br. 8-11. Instead of calling into question any of the specific findings of the Examiner, Appellant points out what each of the references fails to teach and concludes that the combination does not 6 Appeal2018-005774 Application 14/977 ,922 disclose what is claimed. Appeal Br. 6-11. But by failing to address the Examiner's specific findings, Appellant fails to identify a reversible error in the obviousness rejection. A preponderance of the evidence supports the Examiner's finding of a reason to add a distillation apparatus and recycle the separated water. The Examiner's reason is based on Otsuka's need for a water supply at line 9 and the known ability to distill an aqueous alcohol stream, such as that emerging from Otsuka's line 12. Final 4--5. As acknowledged by Appellant, Hershberger teaches an esterification apparatus in which the lower layer draw line ( 109) sends the aqueous layer from liquid separation apparatus (phase separator 4) to alcohol stripper 12 through line 122. Appeal Br. 8; Hershberger ,r 27. Alcohol stripper 12 recovers alcohol and some ethyl acrylate out the top through line 123 leaving bottoms wastewater, which Hershberger sends through line 124 to a waste treatment plant. Hershberger ,r 31. But Scott teaches, as found by the Examiner, recycling both of the streams of water and alcohol output by the distillation column. Final 4, citing Scott col. 2, 11. 20-26 and the Fig. Thus, a preponderance of the evidence supports the Examiner's conclusion of obviousness. Appellant's arguments against the rejection of claims 1 and 2 as obvious over Ida, Hershberger, and Scott fail for similar reasons. Appellant merely summarizes the teachings of Ida, relies on the summaries of Hershberger and Scott presented in the arguments against the rejection over Otsuka, Hershberger, and Scott and concludes that the references do not disclose what is claimed. Appeal Br. 11-18. But Ida is directed to an apparatus similar to that of Otsuka and the Examiner applies Hershberger and Scott in an analogous manner. Adding known distillation columns for 7 Appeal2018-005774 Application 14/977 ,922 their known separation ability and recycling the separated streams is nothing more than using known apparatus for their known results. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Appellant has not identified a reversible error in the Examiner's findings or the conclusion of obviousness for either rejection. CONCLUSION In summary: 1 Â§ 103 Otsuka, Hershberger, Scott 1 and2 Â§ 103 Ida, Hershberger, Scott Outcome DECISION The Examiner's decision is affirmed. 1 1 and2 1 and2 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 8