Ex Parte Nowack et alDownload PDFPatent Trial and Appeal BoardDec 13, 201713991456 (P.T.A.B. Dec. 13, 2017) Copy Citation 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. 13/991,456 06/04/2013 Patric Nowack TE 925029 4922 62068 7590 12/15/2017 HUNTSMAN INTERNATIONAL LLC LEGAL DEPARTMENT 10003 WOODLOCH FOREST DRIVE THE WOODLANDS, TX 77380 EXAMINER KHAN, AMINA S ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 12/15/2017 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): USPatents@Huntsman.com Diana_E_Ortega@ Huntsman.com sophie_bolt@huntsman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRIC NOWACK, URS LAUK, and ATHANASSIOS TZIKAS Appeal 2016-004289 Application 13/991,456 Technology Center 1700 Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 1, 7—9, and 11. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Huntsman International LLC is identified as the real party in interest. (Appeal Brief, filed August 4, 2015 (“App. Br.”), 3.) 2 Non-Final Rejection mailed March 12, 2015 (“Act.”). The record shows that a previous Non-Final Rejection was mailed May 12, 2014 followed by Final Rejection mailed September 29, 2014 (“Final Act.”). Appeal 2016-004289 Application 13/991,456 CLAIMED SUBJECT MATTER The claims are directed to a disperse azo dye and a process for making the compound. (Spec. 1,11. 1—5.)3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A dye of formula R (la), wherein Ri is trifluoromethyl, R2 denotes nitro, R3 represents hydrogen, R4 is phenyl, and Rs is hydrogen. Claims Appendix (App. Br. 21). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Dehnert Clement US 3,974,123 Aug. 10, 1976 WO 02/059215 A1 Aug. 1, 2002 3 Application 13/991,456, Disperse Azo Dyes, filed June 4, 2013. We refer to the “’456 Specification,” which we cite as “Spec.” 2 Appeal 2016-004289 Application 13/991,456 REJECTIONS Claims 1 and 7—8 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dehnert. Claims 9 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dehnert in view of Clement. OPINION Claim 1 Dehnert describes a compound having formula lb (shown below). Dehnert provides, for formula lb: “B is nitro, cyano, chlorine, bromine, trifluoromethyl, carbomethoxy, carboethoxy, P-methoxycarboethoxy, methylsulfonyl, ethylsulfonyl, methyl, methoxy, phenylazo, chlorophenylazo or dichlorophenylazo,” whereas “B1 is hydrogen, nitro, chlorine, bromine, cyano, methyl, methoxy, carbomethoxy, phenylsulfonyl, carboethoxy, methylsulfonyl or ethylsulfonyl” and “B2 is hydrogen, chlorine, bromine, cyano or methyl.” Denhert 8:50—9:1 (cited in Final Act. 34). Dehnert also provides that “A’s, independently of one another, are 4 In the Non-Final Rejection from which Appellants appeal, the Examiner rejects claim 1 for obviousness “for the reasons set forth in the previous office action.” Act. 2. 3 Appeal 2016-004289 Application 13/991,456 hydrogen, unsubstituted or substituted alkyl, cycloalkyl, aralkyl, phenyl or acyl” and “A1 has the above meanings.” Id. at 9:2—6 (cited in Final Act. 3). Dehnert also describes a compound having formula I (shown below). A Dehnert provides: The radicals A can be identical or different. A can be hydrogen or, e.g., the following substituents: alkyl of 1 to 8 carbon atoms, alkyl optionally substituted by hydroxyl, cyano, alkoxy of 1 to 8 carbon atoms, phenoxy, phenoxyethoxy or benzyloxy; cyclohexyl, norbomyl, benzyl, phenylethyl, phenylhydroxyethyl, phenylpropyl, phenylbutyl, phenyl optionally substituted by chlorine, methyl, methoxy or ethoxy, polyalkoxyalkyl, hydroxypolyalkoxyalkyl, alkanoyloxyalkyl or alkoxycarbonylalkyl, alkanoyl, aralkanoyl, aroyl, alkylsulfonyl or arylsulfonyl. Id. at 1:5—15, 3:4—20 (cited in Final Act. 3). In rejecting claim 1, the Examiner finds that Dehnert teaches formula lb where “B is trifluoromethyl, B1 is nitro, chlorine or bromine, B2 is hydrogen, cyano or bromine[.]” Final Act. 3 (citing Dehnert at 8:45—9:10). The Examiner finds that Dehnert teaches formula I where “A can be phenylpropyl or phenybutyl.” Id. (citing Dehnert at 3:1—20). The Examiner further points to an exemplary formula (shown below) in Table 7 4 Appeal 2016-004289 Application 13/991,456 and notes that “the hydrogen of R5 [for example 217] could be substituted by any of the functionally equivalent substitutes of B2 such as nitro, cyano or bromine” to teach “similar structures with similar substituents” rendering obvious the formula recited in claim 1. Id. 3. In the Answer, the Examiner states: “Free rotation about the single C-N bond on the left most ring [for example 217] results in an inversion of the CF3 and H groups” as required by the recited formula of claim 1. Ans. 4. Citing to formula lb for which “B1 is hydrogen, nitro, chlorine, bromine, cyano, methyl, methoxy, carbomethoxy, phenylsulfonyl, carboethoxy, methylsulfonyl or ethylsulfonyl,” the Examiner reasons that a skilled artisan would have chosen nitro as one of the twelve possibilities to replace the hydrogen in the R2 position to arrive at the recited formula. Id. (citing Dehnert 8:66—68). Appellants argue that Dehnert provides no motivation to modify the prior art example 217 by selecting the various substituents and arranging them precisely as the Examiner proposes. App. Br. 14. More specifically, Appellants argue that the recited formula has a hydrogen group at R1, a nitro group at R2, and a trifluoromethyl group at R3 whereas example 217 has a trifluoromethyl group at R1 and a hydrogen group at each R2 and R3. Id. Appellants argue that, given the myriad of possibilities for each functional group in either formula I or formula lb of Dehnert, a skilled artisan would not have “at once envisaged” the particular compound recited in claim 1. Id. at 13. 5 Appeal 2016-004289 Application 13/991,456 Disclosure of chemical genus does not render obvious all species that fall within it. In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992). As in Jones, the record before us lacks evidence, other than the Examiner’s speculation, that an ordinary artisan would have had reason to rotate example 217 in the precise way as the Examiner proposes. See id., 958 F.2d at 350 (“The prior art must provide one of ordinary skill in the art the motivation to make the proposed molecular modifications needed to arrive at the claimed compound.”) (quoting In re Lain, 747 F.2d 703, 705 (Fed. Cir. 1984)). The record before us likewise lacks evidence showing “some articulated reasoning with some rational underpinning” as to why a skilled artisan would have chosen to modify example 217 based on one of the functional groups of formula lb which is one of the many formulae (each having multiple possible functional groups) embodied in one the 678 examples described in Dehnert. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “We expressly reject the notion that a claim reciting a species is per se patentable when the prior art discloses a genus encompassing a broad but finite number of known options which include the claimed species.” Ex Parte HongFu, 89 USPQ 2d. 1115, 1122 (BPAI 2008) (precedential). The prior art in this case, however, does not describe the claimed species and the record lacks a sufficient showing as to why a skilled artisan would have modified the formula in example 217 (e.g., by rotating and substituting) as proposed by the Examiner. The Examiner’s obviousness rejection lacking the rational underpinning cannot be sustained. Based on the foregoing, we decline to reach the remaining issues raised by Appellants. See In re Cleave, 560F.3dl331, 1338 (Fed. Cir. 6 Appeal 2016-004289 Application 13/991,456 2009) (declining to reach other rejections after upholding an anticipation rejection); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (affirming ITC’s determination based on a single dispositive issue, and declining to reach other issues not decided by the agency). Claims 8, 9, and 11 Because we find that the record before us does not support the Examiner’s obviousness rejection of claim 1 based on Dehnert, we find that the record does not support the rejection of claims 79 and 11 at least partially based on Dehnert. DECISION The Examiner’s rejections of claims 1, 7—9, and 11 are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation