Ex Parte Ooms et al

Patent Trial and Appeal Board

Mar 29, 2017

13280423 (P.T.A.B. Mar. 29, 2017)

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.
13/280,423 10/25/2011 Pieter Ooms 074023-0302-US (286822) 2123
123223 7590 03/31/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
OTTON, ALICIA L
ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIETER OOMS, FRIEDHELM RISSE, ANDRE DUX,
4CARSTEN BUCHALY, THOMAS PANCUR, ARTHUR SUSANTO,
GEORG RONGE, JOHAN VANDER EYNDE, and WIM WUYTACK
Appeal 2015-003354
Application 13/280,423
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and JOHN E.
SCHNEIDER, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Appeal 2015-003354
Application 13/280,423
STATEMENT OF CASE
The following claim is representative.
1. A process comprising purifying dialkyl carbonates of the formula
(II) in one or more columns in the presence of an alkylene oxide of
the formula (V) and of an alkyl alcohol of the formula (IV)
R-—o—C—O—R
II
O (II)
wherein R1 and R2 represent, independently of one another, linear or
branched, substituted or unsubstituted Ci-C6-alkyl,
R3 and R4 represent, independently of one another, hydrogen,
substituted or unsubstituted Ci-C4-alkyl, substituted or unsubstituted C2-C4-
alkenyl or substituted or unsubstituted Ce- Ci2-aryl, and
R5 represents a straight-chain or branched Ci-C4-alkyl; and
wherein the mean residence time of the dialkyl carbonate in the
column(s) is from 0.3 h to 3 h.
Grounds of Rejection
Claims 1-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fukuoka.
Claims 1-14 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-13 of
copending Application No. 13/280,438.
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Application 13/280,423
Cited References
Fukuoka US 2009/0105495 A1 Apr. 23,2009
copending Application No. 13/280,438
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 5-13. The following facts are highlighted.
1. According to Fukuoka |98,
The reaction time for the transesterification reaction
carried out in step (I) is considered to equate to the average
residence time of the reaction liquid in the continuous multistage
distillation column A. The reaction time varies depending
on the form of the internals in the distillation column A
and the number of stages, the amounts of the starting materials
fed in, the type and amount of the catalyst, the reaction
conditions, and so on. The reaction time is generally in a
range of from 0.1 to 20 hours, preferably from 0.5 to 15 hours,
more preferably from 1 to 10 hours.
2. According to Fukuoka |72,
A cyclic carbonate preferably used in the present
invention is one not containing a halogen that has been
produced through reaction between, for example, an alkylene
oxide such as ethylene oxide, propylene oxide or styrene
oxide and carbon dioxide. A cyclic carbonate containing
small amounts of such raw material compounds, the dial, and
so on may thus be used as a starting material in the present
invention.
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Appeal 2015-003354
Application 13/280,423
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The burden of demonstrating unexpected results rests on the party
asserting them, and “it is not enough to show that results are obtained which
differ from those obtained in the prior art; that difference must be shown to
be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). “Unexpected results must be established by factual evidence. Mere
argument or conclusory statements in the specification does not suffice.” In
re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). “[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.” In re Baxter-Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
It has been long held that “even though applicant’s modification
results in great improvement and utility over the prior art, it may still not be
patentable if the modification was within the capabilities of one skilled in
the art, unless the claimed ranges ‘produce a new and unexpected result
which is different in kind and not merely in degree from the results of the
prior art.” In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed.
Cir. 1996) (quoting In re Aller, 220 F.2d 454, 456 (1955), and citing In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
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Application 13/280,423
“The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains.” In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979). “It is well established that the
objective evidence of nonobviousness must be commensurate in scope with
the claims.” In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
When a claim defines a composition in terms of ranges of elements,
any single prior art reference that falls within each of the ranges anticipates.
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1345. (Fed. Cir. 1999).
Rejection 1
The Examiner contends that
The [Fukuoka] ‘494 publication teaches a process for producing
and subsequently purifying dialkyl carbonates on a large industrial
scale by using a multi-stage distillation column (see Abstract). The
reference teaches the claimed dialkyl carbonates as Formula (C) at
paragraph [0031], as well as the claimed alkyl alcohol (Formula (B) in
the prior art), with methanol and ethanol both disclosed at paragraph
[0033]. With respect to the presence of the alkylene oxide of Formula
(V), the reference discloses at paragraph [0072] that the cyclic
carbonate is prepared from an alkylene oxide which is preferably
ethylene oxide or propylene oxide (as recited by instant claims 5 and
6).
Ans. 5. The Examiner further finds that
The prior art as a whole, as evidenced by the general disclosure of the
‘494 publication indicates that the mean residence time of the reaction
mixture (including the dialkyl carbonate to be purified) is a result-
effective variable that can be routinely optimized by varying the
aperture range of the sieve trays in the distillation column within the
range indicated as preferable by the ‘494 publication (see paragraph
[0095]). Further, regarding overlap in pressure or temperature ranges,
it is noted that “[W]here the general conditions of a claim are
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Application 13/280,423
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” See In re Aller, 220
F.2d 454 ... (CCPA 1955). The prior art recognizes the consequences
of having too much or too little residence time (increase in side
reactions vs. decrease in efficiency).
Ans. 6.
Appellants contend that
Fukuoka does not provide any reason or rationale for a person of
ordinary skill in the art to utilize a residence time as claimed. In fact,
Fukuoka makes no mention of particular residence times at all. Nor
does Fukuoka suggest that residence time is a result effective variable
that may be altered or adjusted.
Br. 6. Appellants further argue that. “Fukuoda [sic] teaches away from
using a short residence time as a person of ordinary skill in the art would not
be motivated by the teachings of Fukuoka to use a short residence time but
would rather use a long residence time.” Br. 7. Appellants argue that “the
Examiner has not demonstrated that carrying out the purification in the
presence of an alkylene oxide of the formula (V) as instantly claimed would
have been obvious based on the disclosure of Fukuoka. Id. Finally,
Appellants argue the
unexpectedly superior quality of the obtained dialkyl carbonate where
the mean residence time is less than 2 hours is demonstrated by
Example 1 in comparison to Comparative Example 1 and 2. Page 16,
line 15 though page 17, line 19 and page 17, line 25 through page 19,
line 23 of the present specification.
ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
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obviousness. We provide the following additional comment to the
Examiner’s argument set forth in the Final Rejection and Answer.
We are not persuaded by Appellants’ arguments. With respect to
Appellants’ argument that Fukuoka does not disclose alkylene oxide as in
the process, Fukouka discloses that an alkylene oxide such as ethylene oxide
may be present in the reaction. FF2. We are also not persuaded by
Appellants’ argument that Fukuoka fails to teach the claimed residence time.
Fukuoka discloses that the reaction time (equivalent to residence time) for
preparation of a diakyl carbonate is “generally in a range of from 0.1 to 20
hours, preferably from 0.5 to 15 hours, more preferably from 1 to 10 hours.”
FF1. Appellants’ residence time of 0.3h to 3h falls squarely within
Fukuoka’s disclosed preferred residence time range of 1 to 10 hours.
“Selecting a narrow range from within a somewhat broader range disclosed
in a prior art reference is no less obvious than identifying a range that simply
overlaps a disclosed range. In fact, when ... the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap. The normal desire of scientists or
artisans to improve upon what is already generally known provides the
motivation to determine where in a disclosed set of percentage ranges is the
optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003). Thus, Fukuka does not teach away from shorter residence
times, as residence times as short as 1 hour are disclosed in Fukuoka.
Finally we agree with the Examiner that Appellants have failed to
provide unexpected results within the scope of the pending claims. Ans. 11-
12. Fukuoka indicates that many variables influence residence time.
Residence time “varies depending on the form of the internals in the
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distillation column A and the number of stages, the amounts of the starting
materials fed in, the type and amount of the catalyst, the reaction conditions,
and so on.” FF1. Furthermore, Appellants’ data in the Specification,
Example 1, and Comparative Examples 1 and 2 (Spec. 16-19) are not truly
comparative of residence time only. For example, Example 1 is conducted
with a bottom evaporator temperature of 102°C, with purification at 10 bar
(absolute), and a vapor stream temperature of 137°C. Comparative
Example 2 is conducted with a bottom evaporator temperature of 102°C,
purification is conducted at 20 bar (absolute), and a vapor stream
temperature of 40°C. In other words, Appellants have not held all factors
that influence residence time constant, and provided comparative results
while changing only the actual residence time. Furthermore, Fukuoka
discloses that it was well known in the art from Fukuoka that as, “the
residence time increases, and hence side reactions (e.g. a reaction between
the reaction product dial and unreacted cyclic carbonate) become liable to
occur.” |95. Thus, one of ordinary skill in the art reading Fukuoka would
have expected that a shorter residence time would limit the byproducts of
side reactions. Expected beneficial results are not evidence of
nonobviousness. See, In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
Appellants have not provided sufficient evidence of unexpected
results, and obviousness rejection 1 is affirmed for the reasons of record.
Rejection 2
Claims 1-14 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-13 of
copending Application No. 13/280,438.
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Appeal 2015-003354
Application 13/280,423
According to Patent Office records, Application No. 13/280,438 is
now abandoned, and therefore, this rejection is moot.
CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejection,
which is affirmed for the reasons of record. All pending, rejected claims
fall. The Examiner’s obviousness-type double patenting rejection is now
moot.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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