Ex Parte Müller et al

Patent Trial and Appeal Board

Oct 31, 2012

12621588 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HENIZ-HERBERT MULLER, STEPHAN EHLERS,
ANDREAS SCHLEMENAT, ARNULF WERNER, and
MARTIN SCHIFFHAUER
__________

Appeal 2011-013327
Application 12/621,588
Technology Center 1600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
continuous process for producing an aqueous formaldehyde solution. The
Patent Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

Appeal 2011-013327
Application 12/621,588

2
STATEMENT OF THE CASE
Claims 1-6 are on appeal. Claim 1 is representative and reads as
follows:
1. A continuous process for producing an aqueous formaldehyde
solution having a formaldehyde content of from 25 to 56 wt. %, based on
weight of aqueous formaldehyde solution comprising:
a) oxidizing methanol to produce an aqueous formaldehyde solution,
and
b) determining formaldehyde content of the aqueous formaldehyde
solution by online analysis,
c) comparing the formaldehyde content determined in b) with a
desired formaldehyde content and
d) optionally, adding water to obtain the desired formaldehyde content
in the aqueous formaldehyde solution.

The Examiner rejected claims 1-6 under 35 U.S.C. § 103(a) as
unpatentable over Yoshikawa1 and Workman, Jr.2
Claims 2-6 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 Yoshikawa taught a process for preparing an
aqueous formaldehyde solution having a formaldehyde concentration of
from 37 to 60 wt.% by oxidizing methanol, wherein water is added to adjust
the concentration of formaldehyde to a desired amount. (Ans. 5.) The
Examiner found that Yoshikawa did not teach using an online analysis for

1 US Patent No. 4,594,457 issued to Kyugo Yoshikawa et al., Jun. 10, 1986.
2 Jerry Workman, Jr., A review of process near infrared spectroscopy: 1980-
1994, 1 NEAR INFRARED SPECTROSC. 221-245 (1993).

Appeal 2011-013327
Application 12/621,588

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determining the content of formaldehyde in the reactant solution. (Id.)
However, the Examiner found that Workman, Jr. described near infrared
spectroscopy, including on-line NIR analysis, as a useful tool for accurate
macro-analysis of major chemical composition parameters or contaminants.
(Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to use an online
analytical method, specifically near infrared spectroscopy taught by
Workman, Jr., in the method of Yoshikawa to obtain an accurate reading of
the formaldehyde content in the reaction solution produced by the method
taught therein, to gauge the amount of water to be added to yield a
formaldehyde content that is within the desired range disclosed by
Yoshikawa. (Id.)
Appellants contend that Yoshikawa achieved a desired concentration
of its formaldehyde solution by control of the relative amounts of the
reactants, and not by actually measuring the concentration of the
formaldehyde solution after oxidation of the methanol and then adjusting the
concentration, if necessary. (App. Br. 3.) Appellants also assert that
Workman, Jr. does not teach or suggest measuring and adjusting the
concentration of the product solution after completion of the reaction as
required by the claimed invention. (Id.; see also Reply Br. 2)
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusions that the subject matter of
Appellants’ claims 1-6 is obvious over the combination of Yoshikawa and
Appeal 2011-013327
Application 12/621,588

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Workman, Jr. Accordingly, we sustain the Examiner’s rejection for the
reasons set forth in the Answer, which we incorporate herein by reference.
For emphasis only, we provide the following: Appellants assert that
Yoshikawa did not teach or suggest actually measuring the reaction product
concentration after the reaction has been completed, i.e., prior to adjusting
that concentration, if necessary. (See App. Br. 4.) However, as the
Examiner explained, it would have been obvious to a person of ordinary skill
in the art that Yoshikawa or an artisan practicing Yoshikawa’s process
would have measured the formaldehyde content after the formaldehyde
solution was formed to determine if the disclosed adjustment step was
necessary. (See Ans. 7; see also In re Jacoby, 309 F.2d 513, 516 (CCPA
1962)(The question of obviousness cannot be approached on the basis that
an artisan having ordinary skill would have known only what was read in the
references, because such artisan must be presumed to know something about
the art apart from what the references disclose.)). Also as the Examiner
found, Workman, Jr. provided the motivation to use an online analysis to
provide such a measurement. (Ans. 5, 7.)

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

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