Ex parte Bay

Board of Patent Appeals and Interferences

Feb 15, 2002

08324549 (B.P.A.I. Feb. 15, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM E. BAY
__________
Appeal No. 1999-1153
Application 08/324,549
___________
ON BRIEF
___________
Before OWENS, LORIN and MOORE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-12,
15-19 and 21-37, which are all of the claims remaining in the
application.
THE INVENTION
The appellant’s claimed invention is directed toward a
process for making an acid amide by contacting an (Si, Ge or
Appeal No. 1999-1153
Application 08/324,549

2
Sn substituted amino)-1,3,5-triazine having a recited general
formula with an acid halide. Claim 1 is illustrative:
1. A process for preparing acid amides which comprises
the step of contacting:
(a) a (Si, Ge or Sn substituted amino)-
1,3,5-triazine represented by the
formula:
wherein
Z and Z are independently1
selected from the group consisting of
hydrogen, a hydrocarbyl, a
hydrocarbyloxy, a hydrocarbylthio, a
group represented by the formula N(Q) ,2
and a group represented by the
formula
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Application 08/324,549

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each Q is independently selected from the group
consisting of hydrogen, hydrocarbyl, hydrocarbyloxy
hydrocarbyl and M(R ) , provided that at least one Q group is1 3
M(R ) ,1 3
A is an n-functional anchor,
n is at least 2,
each Z is independently selected from the group2
consisting of hydrogen, a hydrocarbyl, a hydrocarbyloxy, a
hydrocarbylthio and a group represented by the formula N(Q) , 2
each M is independently selected from the group
consisting of silicon, germanium and tin, and
each R is independently selected from substituted or1
unsubstituted alkyl, alkenyl, aryl, aralkyl and alkoxy groups;
and
(b) an acid halide,
under reaction conditions sufficient to produce a
corresponding acid amide derivative.
THE REFERENCES
Gizycki et al. (Gizycki) 3,732,223 May 8,
1973
Jacobs, III et al. (Jacobs) 4,939,213 Jul. 3,
1990
Chemical Abstracts AN 104:148979 (CA ‘979), abstract of
Appeal No. 1999-1153
Application 08/324,549

Claims 29 and 30, which depend indirectly from claim 1,1
should have been included in the rejections of that
independent claim instead of the rejection of independent
claim 21. Because the rejections of the independent claims
are reversed, this error is not material to our decision.
Claims 9 and 29 are duplicates, as are claims 10 and 30. 2
Also, claim 10 depends from itself. The examiner and the
4
Maurizio Taddei and Federica Tempesti, “Aminosilanes in
organic synthesis: preparation of N,N’-disubstituted
putresceine derivatives”, 15 Synth. Commun. 1019-24 (1985).
Chemical Abstracts AN 107:58801 (CA ‘801), abstract of Paul
Louis Compagnon et al., “Pyridines; XV. Synthesis of enamides
by selective N-acylation of silylated primary enamines;
results of the regioselective metalation of s-collidine, 2,4-
lutidine and 2,4-dimethylquinoline”, Synth. 948-52 (1986).
Dennis P. Phillion et al. (Phillion), “Large-Scale Synthesis
of Pinacol Iodomethaneboronate and Its Application to
(Acylamino)methaneboronates via (Trimethylsilyl)lithioamines”,
51 J. Org. Chem. 1610-12 (1986).
Sundaramoorthi Rajeswari et al. (Rajeswari), “A New Synthesis
of Amides from Acyl Fluorides and N-Silylamines”, 28 Tetrahed.
Lett. 5099-102 (1987).
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 1-12 and 15-19 over Phillion, Rajeswari, CA
‘979 or CA ‘801, and claims 21-37 over Gizycki in view of
Jacobs.1,2
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Application 08/324,549

appellant should correct these errors.
5
OPINION
We reverse the aforementioned rejections. We need to
address only the independent claims, i.e., claims 1 and 21, to
which, respectively, the first and second rejections are
applied.
Rejection of claim 1
The examiner points out that Phillion (page 1611, scheme
1, conversion of 6 to 7), Rajeswari (page 5100, conversion of
1 to 3), CA ‘979 (reaction 5), and CA ‘801 (reaction 5)
disclose reactions of silylamine compounds with acid halides
(answer, pages 4-5). The examiner argues that the only
difference between the appellant’s claimed process and the
processes in the references is that they use different
silylamine starting materials (answer, page 5). The examiner
argues that one of ordinary skill in the art would have been
motivated to use the appellant’s (Si-substituted amino)-1,3,5-
triazines as the starting material in the processes of the
references because they were known compounds and, because they
are analogous to the starting materials in the references in
Appeal No. 1999-1153
Application 08/324,549

The examiner actually has not established that the3
appellant’s (Si substituted amino)-1,3,5-triazines were known
compounds. The examiner argues that “the starting material
triazino [sic, triamino] 1,3,5-triazine (Melamine) is also not
novel or unobvious and is well known to a person of ordinary
skill” (answer, page 8). Melamine, however, does not fall
within the scope of the formula in the appellant’s claim 1
which requires an Si, Ge or Sn substituted amino group. The
appellant, however, does not argue that the (Si, Ge or Sn
substituted amino)-1,3,5-triazines were unknown at the time of
his invention.
6
that they are silylamines, they would have been expected by
one of ordinary skill in the art to react similarly to the
starting materials in the references (answer, pages 5 and 8).3
Although the appellant has challenged the examiner’s
argument that one of ordinary skill in the art would have
expected (Si substituted amino)-1,3,5-triazines to react
similarly to other silylamines (brief, page 5), the examiner
has provided no support for this argument. The examiner has
provided mere speculation, and such speculation is not a
sufficient basis for a prima facie case of obviousness. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301
F.2d 686, 690, 133 USPQ 360, 364 (CCPA 1962).
As pointed out by the appellant (brief, page 4), the
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examiner’s argument that application of a known process to a
new starting material would have been obvious to one of
ordinary skill in the art (answer, pages 5 and 8) is based
upon a per se
rule. As stated by the court in In re Ochiai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995):
The use of per se rules, while undoubtedly less
laborious than a searching comparison of the claimed
invention - including all its limitations - with the
teachings of the prior art, flouts section 103 and
the fundamental case law applying it. Per se rules
that eliminate the need for fact-specific analysis
of claims and prior art may be administratively
convenient for PTO examiners and the Board. Indeed,
they have been sanctioned by the Board as well. But
reliance on per se rules of obviousness is legally
incorrect and must cease.
The examiner has not carried out the required fact specific
analysis. That is, the examiner has not explained why
evidence
relied upon by the examiner shows that one of ordinary skill
in the art would have been led to make acid amides by the
process recited in the appellant’s claims, and would have had
a reasonable expectation of success in doing so. See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
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1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680
(Fed. Cir. 1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ
645, 648 (Fed. Cir. 1985).
The examiner argues that the majority in In re Ross, 305
F.2d 878, 881, 134 USPQ 320, 322 (CCPA 1962), agreed with the
examiner and the board that once the examiner cited prior art
showing a general reaction to be old, the burden was on the
appellants to present reason or authority for believing that a
particular group in the appellants’ compound would take part
in or affect the basic chlorination reaction disclosed in the
references. Since Ross, however, the court, as indicated by
Ochiai as set forth above and by In re Brouwer, 77 F.3d 422,
425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996), has held that
reliance upon per se rules of obviousness, such as that relied
upon by the majority in Ross, is improper, and that, instead,
an analysis based upon the particular facts of a case is
required.
Appeal No. 1999-1153
Application 08/324,549

The product made by the process in Ross, like those in4
Ochiai and Brouwer, was novel and unobvious. See Ross, 305
F.2d at 881, 134 USPQ at 322.
9
The examiner argues that Ochiai and Brouwer are not on
point because, unlike in those cases, the appellant’s process
makes a known product (answer, pages 7-8). Regardless of4
this factual distinction, the examiner must make the fact-
based analysis required by those cases, and the examiner has
not done so.
For the above reasons, we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the process recited in the appellant’s
independent claim 1 over Phillion, Rajeswari, CA ‘979 or
CA ‘801. Consequently, we reverse the rejections over these
references.
Rejection of claim 21
Regarding Gizycki, the examiner argues: “The prior art
teaches an analogous process of preparing amides by reacting
amino triazine with phosgene. See column 2, Reactions (A)
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Actually, in reactions (A) and (B) Gizycki reacts5
amino-s-triazines with oxalyl chloride. Gizycki teaches that
phosgenation of amines fails when applied to amino-s-triazines
(col. 1, lines 57-62).
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and (B)” (answer, page 5). The examiner argues that the5
appellant’s (Si, Ge or Sn substituted amino)-1,3,5-triazines
and Gizycki’s amino-s-triazines which do not have an Si, Ge or
Sn substituted amino group are analogous in that they are both
triazines, and that one of ordinary skill in the art would
have been motivated to use the appellant’s triazines in
Gizycki’s process because such a person would have expected
analogous triazines to react similarly (answer, pages 5-6).
Although the appellant argues that one of ordinary skill in
the art would not have had a reasonable expectation of success
in making this substitution (brief, page 6), the examiner
provides no evidence in support of his argument. Instead, he
merely relies upon a per se rule of obviousness. As discussed
above regarding the rejection of claim 1, such reliance upon a
per se rule is
improper. Accordingly, we reverse the rejection over Gizycki
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Application 08/324,549

Jacobs is relied upon by the examiner (answer, page 6)6
only for a suggestion of reacting the product of the
appellant’s claim 21 with an isocyanate-reactive material as
recited in the appellant’s dependent claims 31-33, and not for
a disclosure which remedies the above-discussed deficiency in
Gizycki.
11
in view of Jacobs. 6
DECISION
The rejections under 35 U.S.C. § 103 of claims 1-12 and
15-19 over Phillion, Rajeswari, CA ‘979 or CA ‘801, and claims
21-37 over Gizycki in view of Jacobs, are reversed.
REVERSED
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
Appeal No. 1999-1153
Application 08/324,549

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) BOARD OF PATENT
HUBERT C. LORIN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. MOORE )
Administrative Patent Judge )
TJO/ki
Appeal No. 1999-1153
Application 08/324,549

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Bart E. Lerman
Cytec Industries Inc.
1937 West Main Street
P. O. Box 60
Stamford, CT 06904-0060
tjo/ki