DSM IP ASSETS B.V.Download PDFPatent Trials and Appeals BoardMar 26, 20212020002148 (P.T.A.B. Mar. 26, 2021) 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. 15/518,080 04/10/2017 Werner BONRATH BHD-4662-3387 1047 23117 7590 03/26/2021 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER KEYS, ROSALYND ANN ART UNIT PAPER NUMBER 1699 NOTIFICATION DATE DELIVERY MODE 03/26/2021 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________ Ex parte WERNER BONRATH, JAN SCHUETZ, THOMAS NETSCHER, and BETTINA WUESTENBERG _________________ Appeal 2020-002148 Application 15/518,080 Technology Center 1600 _________________ Before RICHARD M. LEBOVITZ, RAE LYNN P. GUEST, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the Examiner’s decision to reject claims 1 and 3–11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as DSM IP Assets B.V. (Appeal Br. 2.) 2 We consider the Final Office Action issued September 14, 2018 (“Final Act.”), the Appeal Brief filed October 15, 2019 (“Appeal Br.”), and the Examiner’s Answer issued on November 22, 2019 (“Ans.”) in reaching our decision. Appeal 2020-002148 Application 15/518,080 2 The Examiner rejects claims 1 and 3–11 under 35 U.S.C. § 103 as being unpatentable over Bonrath3 and Organon.4 Appellant does not argue that any of the rejected claims are separately patentable. Accordingly, we focus on claim 1 in our analysis. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s specification is directed to a catalytic process for the ethynylation of specific poly-unsaturated aldehydes and ketones. (Spec. 1.) Appellant’s claim 1 recites: A catalytic ethynylation process which comprises conducting a catalytic ethinylation reaction of a compound of formula (I): , wherein R1 signifies -H or -CH3, R2 signifies -H, and R3 signifies a moiety selected from the group consisting of: with ethyne in NH3 as a solvent and in the presence of a catalyst of formula ROH, 3 International Patent Application Publication WO 2004/018400 A1, published March 4, 2004. 4 British Patent GB 634,924, published March 29, 1950. Appeal 2020-002148 Application 15/518,080 3 wherein R signifies K or Cs at a catalytic ethinylation reaction temperature between -40 °C to 10 °C. (Appeal Br. 7.) As the Examiner finds, and Appellant does not dispute, Bonrath teaches a process for manufacturing acetylenically unsaturated alcohol by reacting a ketone with acetylene in the presence of ammonia and an alkali metal hydroxide. (See Final Act. 5; see Bonrath abstract.) Bonrath provides examples of this process using potassium hydroxide (KOH) in aqueous solution along with ammonia in an ethynylation process (See, e.g., Bonrath 5:19–6:1, see Final Act. 5.) Bonrath also teaches that the temperature for this reaction is from about 0o C to about 40o C. (Bonrath 4; see Final Act. 5.) The Examiner finds that Bonrath does not teach the ketones of formula I recited in claim 1 in its disclosed ethynylation process. (See Final Act. 6.) But, as the Examiner finds, Bonrath teaches The nature of any other aldehyde or of the ketone which can be reacted with acetylene in accordance with the process of the present invention is not critical, and any aldehyde or ketone with which acetylene is known to react to form an acetylenically unsaturated alcohol may be used, i.e. according to the equation , the unspecified moieties attached to the “central” carbon atom by the dotted lines being those featured in known aldehydes and ketones or in any other aldehydes and ketones which can be produced analogously to the known ones. Appeal 2020-002148 Application 15/518,080 4 (Bonrath 2:21–28.) Thus, Bonrath teaches that the nature of the aldehyde or ketone is not critical. (See Ans. 6–7.) The Examiner finds that Organon teaches a compound of formula (I) recited in Appellant’s claims. (See Final Act. 6, citing Organon 2:35–38.) Appellant does not dispute this finding. The Examiner finds that one of ordinary skill in the art would have had a reasonable expectation of success using the ketone of Organon in Bonrath because Bonrath teaches that any ketone could be used in its process. (See Final Act. 6.) The Examiner finds further that one of ordinary in the art would have had a reason to use the ketone of Organon in Bonrath’s process because Bonrath demonstrates the ethynylation process works and, thus, substituting one element for another would have been obvious. Cf. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Appellant argues that the C-C double bond of formula (I) of claim 1 is conjugated and that “[t]hose ordinarily skilled in this art know that such specific (at least α, β-unsaturated) polyunsaturated aldehydes and ketones are difficult to produce and that until the presently claimed invention were only produced by stoichiometric processes, such as by a Grignard reaction.” (Appeal Br. 5.) Appellant does not direct us to evidence in support of this assertion. (See Ans. 5.) Thus, we are not persuaded that the difficulty in Appeal 2020-002148 Application 15/518,080 5 producing the ketone taught in Organon is a factor in determining the obviousness of the claimed process. Appellant acknowledges that Bonrath teaches a “very broad definition of the substituents of formula (I),” but argues that no α, β-unsaturated aldehydes or ketones are specifically taught to be ethynylated in Bonrath. (Appeal Br. 5.) According to Appellant, [t]he present Applicant has made a very specific selection of a group of aldehydes and ketones and have developed the herein claimed process in order to overcome the deficiencies of the prior art processes. Thus, the fact that Organon may disclose the compounds of formula (I), as well as those of compounds (lb) and (le), would not prompt an ordinarily skilled person to employ such compounds in the process of Bonrath et al. (Appeal Br. 5–6.) This argument is unpersuasive because it fails to provide a reason why those in the art would not have used the ketones of Organon in the process of Bonrath, particularly when Bonrath teaches any ketone known to react with acetylene to form an acetylenically unsaturated alcohol may be used. (See Bonrath 2:22–24.) Appellant does not dispute that the ketones taught in Organon were known by those in the art to react to form an acetylenically unsaturated alcohol. Nor does Appellant argue there was anything unexpected about using the claimed ketone in the process taught in Bonrath or that there are any other secondary considerations to be evaluated. Because Organon demonstrates ketones within the scope of the genus recited in Appellant’s claim 1 were known to those of ordinary skill in the art and Appellant fails to direct us to evidence why one would not have considered using these ketones in the claimed process, we are not persuaded the Examiner erred in rejecting Appellant’s claims as being obvious. Appeal 2020-002148 Application 15/518,080 6 Conclusion Upon consideration of the record and for the reasons given, we affirm the Examiner’s rejection. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–11 103 Bonrath, Organon 1, 3–11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED Copy with citationCopy as parenthetical citation