Ex Parte 6,958,423 et al

Patent Trial and Appeal Board

Dec 12, 2012

95000391 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,391 08/14/2008 6,958,423 14795 4358
23416 7590 12/12/2012
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
JONES, DWAYNE C
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/12/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CHEMTURA CORPORATION
Requester1

v.

ALBEMARLE CORPORATION
Patent Owner and Appellant
____________

Appeal 2012-010003
Reexamination Control 95/000,391
Patent 6,958,423 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

1 Chemtura Corporation did not participate in this appeal. See Right of Appeal
Notice dated October 6, 2010 (hereinafter “RAN”) at 3.
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Patent Owner Albemarle Corporation (“Patent Owner”) appeals under 35
U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-3.2 We
have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a).
We AFFIRM.

STATEMENT OF THE CASE
United States Patent 6,958,423 (hereinafter the “‘423 Patent”), which is the
subject of the current inter partes reexamination, issued to John C. Parks, et al. on
October 25, 2005. The ‘423 Patent is a continuation of U.S. application
08/658,983, filed on June 4, 1996, now U.S. Patent 6,518,468, which is a
continuation of U.S. application 08/338,711, filed on November 14, 1994, now
abandoned, which is a continuation-in-part of U.S. application 08/317,792, filed on
September 16,1994, now abandoned.
We are aware of a judicial proceeding involving the ‘423 patent in U.S.
District Court for the Middle District of Louisiana styled Albemarle Corporation v.
Chemtura Corporation et al (3:05cv1239), which according to Patent Owner has
been concluded. (PO App. Br. 1).
As previously mentioned, Third-Party Requester Chemtura Corporation3
(hereinafter “Requester”) did not file a Respondent Brief in this appeal.
The ‘423 Patent describes an improved process for the complete bromination
of diphenylalkanes to produce a decabromodiphenylalkane, which is a high-

2 See Patent Owner’s Appeal Brief 1 (filed January 4, 2011) (hereinafter “PO App.
Br.”); Examiner’s Answer (mailed April 27, 2012) (hereinafter “Ans.”) 4-9; RAN
11 and 25.

3 See Request for Inter Partes Reexamination filed November 10, 2008.

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quality, ready-to-use flame-retardant (col. 1, ll. 14-37). The process leads to a
decabromodiphenylalkane wet-cake product with “relatively low occluded free
bromine content” as compared with processes that do not use highly diluted
diphenylethane feeds (col. 8, l. 1-9). Claim 1, which is illustrative of the appealed
subject matter, is directed to a wet cake product, and reads as follows:4
1. A wet cake comprising water and solid brominated
diphenylethane product, which product contains a predominate
amount of decabromodiphenylethane, the wet cake having an
occluded free bromine content of from about 500 ppm to about 2000
ppm.
(PO App. Br., Claims App’x.)
Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1-3 under 35 U.S.C. § 103(a) as obvious over Templeton;5 and
II. Claim 1 under 35 U.S.C. § 102(b) as anticipated by Ransford.6
Since the first rejection based on Templeton addresses all of the claims on
appeal, we need not reach the second rejection based on Ransford.

CLAIM INTERPRETATION
As pointed out by the Examiner, the ‘423 Patent defines “wet cake” as
“undried solids recovered from the slurry.” (RAN 9, quoting the ‘423 Patent, col.
7, ll. 61-67.) Accordingly, we adopt the Examiner’s interpretation that the term

4 Claims 1-3 have not been amended during reexamination and, thus, are identical
to the claims of the original patent.

5 US Patent 5,124,496, issued June 23, 1992 to Mark A. Templeton, et al.

6 US Patent 5,030,778, issued July 9, 1991 to George H. Ransford.
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“wet cake” is “an undried, solid product separated from aqueous slurry during the
decabromodiphenylethane production process that contains water” (RAN 9). We
also adopt the Examiner’s interpretation of the term “occluded free bromine” as
“unreacted bromine, which is contained in the decabromodiphenylethane product
component of the wet cake and which cannot be removed by ordinary washing
techniques to reduce its content in the product” (RAN 10, quoting the ‘423 Patent,
col. 8, ll. 10-14). The Examiner’s interpretations are consistent with the ‘423
Patent. We also note that Patent Owner substantially agrees with the Examiner’s
interpretation of these claim terms (PO App. Br. 6, n.4 and 7, n. 6).

OBVIOUSNESS REJECTION
Rejection I - Templeton
Issue
The issue with respect to Rejection I is:
Does the evidence support the Patent Owner’s view that the Examiner erred
in concluding that a wet cake product having an occluded free bromine content of
from about 500 ppm to about 2000 ppm would have been obvious to one of
ordinary skill in the art having the teachings of Templeton?
Discussion
Initially, we observe that claim 1 is not directed to a method for the
formation of a decabromodiphenylethane product, but recites only a wet-cake
product.
Templeton teaches that the decabromodiphenylalkane product from a first
reaction mass including the diphenylalkane reactant, a bromine source, and a
catalyst “will contain, at least initially, more than about 100 ppm free bromine and
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can contain as high as about 13000 ppm excess bromine or more,” which produces
an undesirable color component to the flame retardant product (col. 6, ll. 13-21).
The Examiner finds that Templeton’s “excess bromine” and “free bromine” meet
the “occluded free bromine” term of the ‘423 patent (Ans. 4). While Patent Owner
indicates that “excess bromine” and “occluded free bromine” are not synonymous,
Patent Owner nonetheless has presented no meaningful argument or evidence
demonstrating error in the Examiner’s reliance on Templeton’s “excess bromine”
and “free bromine” as meeting the claimed “occluded free bromine content” (PO
App. Br. 6, n. 4).
Templeton teaches forming a second reaction mass “[t]o remove a
substantial portion of the excess bromine from the decabromodiphenylalkane
predominant product” (col. 6, ll. 22-26). The second mass reaction includes the
first reaction mass product and a treatment solution, such as an aqueous basic
solution (col. 6, ll. 24-54). Templeton further teaches that the second reaction
mass is preferably formed prior to drying, “since the product will require drying
after the bromine removal step” (col. 6, ll. 30-34).
Templeton teaches that “[e]nough basic solution should be utilized so as to
form a stirrable reaction mass and to react with essentially all of the excess
bromine in the decabromodiphenylalkane product” (col. 6, ll. 60-66). Templeton
further teaches that the second reaction mass is held at a temperature above about
150° C “for 10 minutes or longer depending on the amount of bromine removal
desired” (col. 7, ll. 22-24). According to Templeton’s teachings, the temperature
may be held between 180° C and 300° C and maintained “for 30 minutes to about
5 hours in order to obtain the desired product with less than about 100 ppm excess
bromine” (col. 7, ll. 21-26).
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The Examiner finds that the product of the second wet cake reaction mass
prior to drying constitutes a wet cake within the meaning of the claims of the ‘423
patent (Ans. 14-15). The Examiner considers the final product (i.e., the product
with “less than 100 ppm excess bromine”) to be the wet cake after drying, as
described in Examples 7-9 of Templeton (Ans. 6).
The Examiner concludes that “[s]ince the range of ‘from about 500 ppm to
about 2000 ppm’ of claim 1 is encompassed by (lies inside) the ranges disclosed by
Templeton of more than about 100 ppm to about 13,000 ppm free bromine,
Templeton establishes a prima facie case of obviousness” (Ans. 6). The Examiner
further concludes that
one having ordinary skill in the art would have found it obvious to
select the claimed ranges from the ranges encompassed by Templeton.
The skilled artisan would have been motivated to optimize the ranges
of Templeton in order to make a wet cake of DBDPE predominant
product of a flame retardant that is less corrosive to the processing
equipment and with reduced color impurities in the final product with
a predictable and reasonable expectation of success, thereby arriving
at the claimed invention.
(Ans. 7).
The Examiner explains that “[s]ince Templeton's final product is less than
about 100 ppm excess bromine, Templeton's teaching a range having from "at least
initially, more than about 100 ppm free bromine and can contain as high as about
13000 ppm excess bromine or more" (column 6, lines 8-21), is directed to an
intermediate wet cake product rather than a final dried DBDPE product” (Ans. 25).
The Examiner further explains that “Templeton provides the skilled artisan
with direction and guidance to reduce the amount of occluded free bromine not
only in the final product but also in the intermediate wet cake DBDPE products”
(Ans. 22).
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Patent Owner initially argues that Templeton’s range of “more than about
100 ppm free bromine” to “as high as about 13,000 ppm excess bromine or more”
is imprecise and not a reasonably definite range. We disagree that the disclosed
range of Templeton is imprecise to the degree that the skilled artisan would not be
able to determine an amount of excess bromine that would fall within the range.
While it is true that the lower and upper endpoints are not strictly defined, the term
“about” is a word of approximation that skilled artisan would have readily
understood to have narrowed or extended the endpoints beyond 100 ppm and
13,000 ppm, respectively. Moreover, Patent Owner has neither argued nor
provided any meaningful evidence to suggest that one of ordinary skill in the art
would have understood the language “more than about 100 ppm” to exclude the
claimed range of about 500 ppm to about 2000 ppm.
The majority of Patent Owner’s arguments are focused only on the wet cake
product resulting from the first reaction mass. For example, Patent Owner argues
that, since the acceptable final product (after the second stage reaction) has less
than about 500 ppm excess bromine, the intermediate wet cake of the first stage
contains much higher amounts (PO App. Br. 7). Patent Owner further argues that
By teaching that forming a second reaction mass is required no matter
what the bromine content of the intermediate wet cake, Templeton
discourages one from addressing, or even seeking to reduce, the
occluded free bromine content of the wet cake when it is formed. One
reading Templeton, without the benefit of knowing Applicant's
invention, would not focus on the bromine content of the wet cake, or
be led to adjust it, or be taught how to do it. All of Templeton's focus
is on after-treatment of the initial products, directing one skilled in the
art toward improvement in color using an after-treatment procedure
which, given the huge variation which Templeton suggests in the wet
cake properties, seems to be independent of the bromine content of the
wet cake intermediate when it is formed.
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(PO App. Br. 9). Accordingly, it appears that Patent Owner’s position is that only
the intermediate wet cake resulting from the filtering the first stage reaction mass
in Templeton (col. 6, ll. 39-48) corresponds to the claimed “wet cake”.
We agree that it does not appear that Templeton teaches a method or a need
to control the amount of excess free bromine in the wet cake formed from the first
reaction mass. Stated another way, one of ordinary skill in the art would not have
appreciated the ability to select the amount of excess free bromine present in the
first reaction mass from Templeton, but rather that the amount of bromine present
would largely be uncontrolled. Indeed, Templeton discloses a second reaction
mass to substantially reduce whatever amount of excess bromine is present only
after the first reaction mass is obtained.
However, the Examiner clearly identifies a second wet cake formed from the
second reaction mass (Ans. 14). Templeton teaches that by controlling the
temperature and the time period for heating the second reaction mass, which
includes a basic treatment solution, the skilled artisan can reduce the amount of
excess bromine in the second wet cake product to a desired amount during the
second reaction step (Templeton, col. 7, ll. 18-24). The second wet cake is
obtained after a process that includes heating the second reaction mass but prior to
an air or oven drying step that occurs after filtering or centrifuging and washing the
second reaction mass (col. 11, ll. 15-17 and col. 12, ll. 17-22).
Patent Owner notes that Templeton teaches that the second reaction mass
product includes less than 500 ppm excess bromine, preferably less than 100 ppm,
which is below the claimed range, and that any amount of excess bromine greater
than 500 ppm is not acceptable (PO App. Br. 7).
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The claimed range of “about 500 to about 2000 ppm” encompasses at least
some amount less than 500 ppm. Thus, even the broadest range for the final
product of less than about 500 ppm disclosed by Templeton would overlap the
claimed range of “about 500 to about 2000 ppm” or so close as to have made the
claimed range obvious. Titanium Metals Corp. of America v. Banner, 778 F.2d
775 (Fed. Cir. 1985).
Further, an improvement in the art is obvious if “it is likely the product not
of innovation but of ordinary skill and common sense.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 402-403 (2007). Optimization of a variable which is recognized in
the prior art to be a result effective variable would ordinarily be within the skill in
the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see also In re Aller, 220
F.2d 454, 456 (CCPA 1955) (“where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.”). In this case, it would take only ordinary skill
to optimize the time and temperature for heating the second reaction mass to arrive
at a wet cake product having the amount of excess bromine claimed, with time and
temperature being taught by Templeton to be a result effective variable for the
amount of excess bromine removed (col. 7, ll. 22-24).
The Examiner further finds that Templeton appreciates that the color of the
final flame retardant dry product depends on the amount of excess bromine present
in the decabromodiphenylalkane product. (Ans. 5, 12-13.) For applications in
which the amount of bromine considered acceptable in the final product may be
more than the 500 ppm considered acceptable in Templeton, for example in a
particular product where a very pure white color may not be necessary, the skilled
artisan need only optimize the time and temperature of the second reaction mass
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step, as taught by Templeton, to arrive at a second reaction mass wet cake product
having an excess bromine content in any of the ranges recited in claim 1-3.
It is true that a routine variable change may cause an unexpected effect.
Claimed subject matter will be unobvious where an applicant presents a credible
showing of criticality of the range for unexpected beneficial results. See Boesch,
617 F.2d at 276; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Aller, 220
F.2d at 456. Patent Owner presents no credible evidence that an amount of excess
bromine of about 500 ppm to 2000 ppm produces an unexpected result or property
in the decabromodiphenylethane product.
Some of our findings and reasoning above may be in contrast to the
Examiner’s position that Templeton discloses reduced amounts of excess bromine
in the claimed range for products that have “not undergone the final heating step in
order to obtain the final DPDPA product” (Ans. 14; see also Ans. 15 and 22
(Examiner compares Example 2, which is a first reaction mass product, with
Examples 7-9, which are dried second reaction mass products)). Further, we do
not agree with the Examiner that Templeton provides a reason for the skilled
artisan to decrease the bromine content “throughout the process of forming the
flame retardant product” (Ans. 18) because, as discussed above, Templeton
provides no instruction or reason to do so for the wet cake resulting from only the
first reaction mass. Accordingly, we designate our affirmance as a new ground of
rejection pursuant to 37 C.F.R. § 41.77(b).

DECISION
In sum, we affirm the Examiner’s decision to reject:
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Claims 1-3 under 35 U.S.C. § 103(a) as obvious over Templeton and we
decline to reach the rejection of claim 1 based on Ransford.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Correspondingly, no portion of the decision is final for purposes of
judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate, however, the Board may elect to defer issuing any decision on such
request for rehearing until such time that a final decision on appeal has been issued
by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-
(g). The decision may become final after it has returned to the Board. 37 C.F.R.
§ 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be either an
amendment of the claims so rejected or new evidence relating to the claims so
rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

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Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the "claims so rejected." Accordingly, a
request to reopen prosecution is limited to issues raised by the new ground(s) of
rejection entered by the Board. A request to reopen prosecution that includes
issues other than those raised by the new ground(s) is unlikely to be granted.
Furthermore, should the patent owner seek to substitute claims, there is a
presumption that only one substitute claim would be needed to replace a cancelled
claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be
limited in scope to the issues raised by the Board's opinion reflecting its decision to
reject the claims and the patent owner's response under paragraph 37 C.F.R.
§ 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A
newly proposed rejection may be appropriate if it is presented to address an
amendment and/or new evidence properly submitted by the patent owner, and is
presented with a brief explanation as to why the newly proposed rejection is now
necessary and why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all
patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to
whether the Board's rejection is maintained or has been overcome. The proceeding
will then be returned to the Board together with any comments and reply submitted
by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and
issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f).
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AFFIRMED

PATENT OWNER:

CONNOLLY BOVE LODGE & HUTZ, LLP
PO BOX 2207
WILMINGTON, DE 19899

THIRD-PARTY REQUESTER:

PETER W. ROBERTS
ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
7918 JONES BRANCH DRIVE, SUITE 500
MCLEAN, VA 22102

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