Ex Parte Nowack et al

Patent Trial and Appeal Board

Dec 13, 2017

13991456 (P.T.A.B. Dec. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
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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.
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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
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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.
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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.
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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
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