Ex Parte Carr et al

Patent Trial and Appeal Board

Nov 13, 2017

12663028 (P.T.A.B. Nov. 13, 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.
12/663,028 03/26/2010 Robert Carr EU-50952 1678
62068 7590 11/15/2017
HUNTSMAN INTERNATIONAL LLC
LEGAL DEPARTMENT
10003 WOODLOCH FOREST DRIVE
THE WOODLANDS, TX 77380
EXAMINER
SAWYER, JENNIFER C
ART UNIT PAPER NUMBER
1671
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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 ROBERT CARR and NICOLAAS VAN WIECHEN1
Appeal 2017-003733
Application 12/663,028
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
method for preparing mixtures of diphenylmethane diisocyanates (“MDI”)
and polyphenyl polymethylene polyisocyanates (“PMDI”) which have been
rejected for failing to satisfy the written description requirement and as
being obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Huntsman International,
LLC. Br. 3.
Appeal 2017-003733
Application 12/663,028
STATEMENT OF THE CASE
“PMDI is an industrially important isocyanate for producing rigid
polyurethane foams which are preferably used as insulation material in the
building industry, as insulating foam in the refrigeration appliance industry
and as sandwich panel construction material.” Spec. 1. “PMDI is
manufactured commercially by the sequential conversion of benzene to
nitrobenzene to aniline which then, by acid catalysed [sic] reaction with
formaldehyde, forms the corresponding mixtures of diphenylmethane
diamines and polyphenyl polymethylene polyamines, known as PMDA.
Phosgenation of PMDA produces PMDI.” Id. Production of PMDI often
involves the use of “nitration grade” benzene which has toluene levels of
less than 500 ppm. Id. at 5. Nitration grade benzene is used to minimize the
impurities in the final product and reduce production costs. Id. at 6.
Nitration grade benzene is itself relatively expensive. Id. The Specification
discloses a method for producing PMDI using benzene with between 500
and 5000 ppm toluene.
Claims 1, 3, 7, 12, 18, 19, 21, 22, and 24 are on appeal. Claims 1 and
21 are the sole independent claims and read as follows:
1. A process for forming diphenylmethane diisocyanate and
polyphenyl polymethylene polyisocyanate consisting of:
(A) forming diphenylmethane diamines, polyphenyl
polymethylene polyamines with toluidine isomers incorporated
into mixed polyamine molecules, or combinations thereof
through a process consisting of the following sequential steps:
a. forming nitrobenzene that contains less than 5000
ppm of nitrotoluene isomers by the mixed acid nitration of
benzene, wherein the benzene comprises 500 to 5000 ppm w/w
alkyl-substituted aromatics comprising toluene, and wherein the
benzene has not been subjected to any additional processing
steps prior to step (a);
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Application 12/663,028
b. converting said nitrobenzene of step (a) to aniline that
contains less than 5000 ppm of toluidine isomers wherein the
toluidine isomers were converted from said nitrotoluene
isomers; and
c. converting the aniline of step (b) into the
diphenylmethane diamines, polyphenyl polymethylene
polyamines with toluidine isomers incorporated into mixed
polyamine molecules, or combinations thereof; and
(B) converting the diphenylmethane diamines,
polyphenyl polymethylene polyamines with toluidine isomers
incorporated into mixed polyamine molecules, or combinations
thereof into diphenylmethane diisocyanates and polyphenyl
polymethylene polyisocyanate.
21. A process for forming diphenylmethane diisocyanate and
polyphenyl polymethylene polyisocyanate consisting of:
(A) forming diphenylmethane diamines, polyphenyl
polymethylene polyamines with toluidine isomers incorporated
into mixed polyamine molecules, or combinations thereof
through a process consisting of the following sequential steps:
a. forming nitrobenzene that contains less than 5000
ppm of nitrotoluene isomers by the mixed acid nitration of
benzene, wherein the benzene comprises 500 to 5000 ppm w/w
alkyl-substituted aromatics comprising toluene, and wherein the
benzene has not been subjected to any additional processing
steps prior to step (a);
b. converting said nitrobenzene of step (a) to aniline that
contains less than 5000 ppm of toluidine isomers wherein the
toluidine isomers were converted from said nitrotoluene
isomers; and
c. converting the aniline of step (b) into the
diphenylmethane diamines, polyphenyl polymethylene
polyamines, with toluidine isomers incorporated into mixed
polyamine molecules or combinations thereof via the
condensation reaction of the aniline and formaldehyde in the
presence of an acid catalyst, wherein the molar ratio of aniline
to acid ranges from 1:0.8-0.1; and
(B) converting the diphenylmethane diamines,
polyphenyl polymethylene polyamines with toluidine isomers
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Application 12/663,028
incorporated into mixed polyamine molecules or combinations
thereof into diphenylmethane diisocyanates and polyphenyl
polymethylene polyisocyanate.
The claims stand rejected as follows:
Claims 1 and 21 have been rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement in
that the amended claims contain new matter not disclosed in the
Specification.
Claims 1, 3, 7, 12, 18, 19, 21, 22, and 24 have been rejected under
35 U.S.C. § 103(a) as unpatentable over Strofer2 in view of Cooke3 and/or
Castner4, in further view of Alexanderson5, Ash6, Welch7, and Soleta.8
NEW MATTER REJECTION
Issue
The issue with respect to this rejection is whether the evidence of
record supports the Examiner’s conclusion that claims 1 and 21 contain new
matter that is not reflected in the Specification.
Appellants’ amended claims 1 and 21 to recite the steps of “forming
nitrobenzene that contains less than 5000 ppm of nitrotoluene isomers” and
“converting said nitrobenzene of step (a) to aniline that contains less than
2 Strofer et al., US 2002/0132953 Al, published Sept. 19, 2002 (“Strofer”).
3 Cooke et al., US 3,270,057, issued Aug. 30, 1966 (“Cooke”).
4 Castner et al., US 2,377,071, issued May 29, 1945 (“Castner”).
5 Alexanderson et al., US 4,021,498, issued May 3, 1977 (“Alexanderson”).
6 Ash et al., US 6,004,452, issued Dec. 21, 1999 (“Ash”).
7 Welch et al., US 5,712,481, issued Jan. 27, 1988 (“Welch”).
8 Soleta et al. WO 2006/107824 A2, published Oct. 12, 2006 (“Soleta”).
Citations are to Soleta et al., US 2009/0011515 Al, published Jan. 8, 2009,
which is the English language equivalent of Soleta.
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Application 12/663,028
5000 ppm of toluidine isomers wherein the toluidine isomers were converted
from said nitrotoluene isomers”. Amendment filed Aug. 22, 2014. The
Examiner finds that the amendments introduce new matter in that there is no
support for either of the limitations. Non-Final Act. 3.
Appellants contend that one skilled in the art would, upon reading the
Specification, understand that the nitrobenzene formed by the claimed
process would contain less than 5000 ppm of nitrotoluene isomers. Br. 11—
12. Appellants point to the Specification where it states that the process of
the invention uses benzene with less than 5000 ppm toluene which would be
the only logical source of nitrotoluene isomers. Id. Appellants argue that,
based on the teachings in the Specification, one skilled in the art would
understand that the intermediate product would have less than 5000 ppm of
nitrotoluene isomers. Id. at 12.
Principles of Law
“In order to satisfy the written description requirement, the disclosure
as originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure must convey
with reasonable clarity to those skilled in the art that the inventor was in
possession of the invention. See id.
“Put another way, one skilled in the art, reading the original
disclosure, must immediately discern the limitation at issue in the claims.”
Id.
Claim 1 recites a solids content range of “at least 35%,” which
reads literally on embodiments employing solids contents
outside the 25-60% range described in the Swiss application
... we are of the opinion that the PTO has the initial burden of
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presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims. By pointing to the fact that
claim 1 reads on embodiments outside the scope of the
description, the PTO has satisfied its burden. Appellants thus
have the burden of showing that the upper limit of solids
content described, i. e., 60%, is inherent in “at least 35%,” as
that limitation appears in claim 1. Appellants have adduced no
evidence to carry this burden.
In re Wertheim, 541 F.2d257, 263-264 (CCPA 1976).
Analysis
The Examiner has the better position. As in Wertheim, the Examiner
points out there is nothing in the present disclosure to show that the presence
of 500 to 5000 ppm of “alkyl-substituted aromatics, e.g. toluene and
xylenes” will necessarily define the amount of nitrotoluene or toluidine
impurities. Ans. 3. Moreover, the term less than 5000 ppm reaches down to
0 ppm. Since the lower limit of toluene present in the starting benzene is
500 ppm, following Appellants’ logic, one skilled in the art would expect at
least some of the toluene to be converted into nitrobenzene and to toluidine.
Thus, Appellants’ Specification does not support a lower limit of 0 ppm
nitrotoluene or toluidine products.
Wertheim places the burden on Appellant to show that the lower limit
including 0 ppm is inherent in the “500 to 5000 ppm” limitation. Wertheim,
541 F.2d at 264. Just as in Wertheim, Appellants have provided no evidence
that rebutted the Examiner’s position.
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Conclusion of Law
We conclude that the evidence of record supports the Examiner’s
conclusion that claims 1 and 21 do not satisfy the written description
requirement.
OBVIOUSNESS
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 1, 3, 7, 12, 18,
19, 21, 22, and 24 would have been obvious over Strofer combined with
either Cooke or Castner, further combined with Alexanderson, Ash, Welch,
and Soleta.
The Examiner finds that Strofer teaches a process for reacting aniline
with formaldehyde to produce methylene dianiline. Non-Final Act. 5. The
Examiner finds that Strofer does not teach conversion of nitrobenzene to
aniline containing less than 5000 ppm of toluidine isomers, however, the
Examiner finds that Cooke and Castner teach this limitation. Id. at 6. The
Examiner finds that Alexanderson teaches that nitration of benzene to
produce nitrobenzene where the unaccounted impurities, which the
Examiner concludes would include nitrotoluene, are 0.06% which falls
within the 5000 ppm limitation of the claims. Id. at 7. The Examiner finds
that Ash discloses the available “standard, commercial-quality benzene”
having 500 ppm toluene. Id. at 8. The Examiner concludes that
[t]he only difference between the claimed invention and the
prior art is the lack of actual combination of the elements in a
single prior art reference. One of ordinary skill in the art could
have combined the elements as claimed by these known
methods, and that in combination, each element merely
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Application 12/663,028
performs the same function as it does separately. This
combination would have been predictable to one of ordinary
skill in the art. Absent any showing of unusual and/or
unexpected results over Applicant’s particular process to
convert benzene to nitrobenzene, then to aniline, then to
polyamines, then finally to polyisocyanates and to monitor the
quality of benzene, the art obtains the same effect on the
method's efficacy and utility. The expected result would be the
conversion of benzene to nitrobenzene then into
polyisocyanates for the polyurethane industry.
Id. at 9.
Appellants contend that the rejection is based on improper use of
hindsight. Br. 13—14. Appellants argue that the art did not recognize that
there was a problem with using nitration grade benzene and that absent
recognition of the problem, there would be no reason to use less pure
benzene. Id. at 15. Appellants point to the age of the Strofer reference to
support their contention that the use of less pure benzene would not have
been obvious. Id. at 15—16. Appellants contend that the combined
references do not teach or suggest all the limitations of the claims. Id. at lb-
17. Finally, Appellants argue that the claimed process produces unexpected
results in that one skilled in the art would not expect that less pure benzene
could be used to produce PMDI. Id. at 18.
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious,” the answer depends on “whether the improvement is more
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than the predictable use of prior art elements according to their established
functions.” Id. at 417.
It can be obvious to adapt a known product “using modem electronic
components in order to gain the commonly understood benefits of such
adaptation, such as decreased size, increased reliability, simplified operation,
and reduced cost.” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007).
Any judgment on obviousness is in a sense necessarily a
reconstmction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstmction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
“The mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims would have been obvious over Strofer combined with either
Cooke or Castner, further combined with Alexanderson, Ash, Welch, and
Soleta. Appellants have not produced evidence showing, or persuasively
argued, that the Examiner’s determinations on obviousness are incorrect.
Only those arguments made by Appellants in the Briefs have been
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considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1
as representative; therefore, all claims fall with claim 1. We address
Appellants’ arguments below.
Appellants contend that the Examiner engaged in the improper use of hindsight
in making the objection. Br. 15. We are unpersuaded. The Examiner’s analysis in
founded in the teachings of the prior art and does not resort to the teachings of the
present disclosure. All of the elements of the claims are found in the art. See Non-
Final Act. 4—8. The motivation of substituting less pure benzene for nitration grade
benzene stems from the commonly understood benefits of a simpler process and lower
costs. See Leapfrog, 485 F.3d at 1162. As Dystar noted
an implicit motivation to combine exists not only when a suggestion may
be gleaned from the prior art as a whole, but when the “improvement” is
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is . . .
cheaper.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). Thus, the substitution of one known
element for another would have been obvious. KSR, 550 U.S. 398 at 416.
Appellants next point to the age of the Strofer reference to suggest
that the substitution of elements would not have been obvious. Br. 15—16.
Again, we are unpersuaded. Mere age of a reference without evidence that
others had tried and failed to solve a problem is not sufficient to defeat a
finding of obviousness. In re Wright, 569 F.2d at 1127. Here Appellants
have offered no evidence, other than attorney argument, that others tried and
failed to produce MDPI using benzene less pure than nitration grade
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benzene. See Br. 15—16. Attorney argument is no substitute for evidence.
Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Appellants argue that Ash is directed to a process for producing
benzene with only 40 ppm toluene and that one skilled in the art would have
used the high purity benzene taught by Ash instead of benzene 545. Br. 16—
17. We remain unpersuaded. Ash teaches that a benzene with between 500
and 5000 ppm toluene was known in the art. Ash, col. 14,11. 43^49. We
agree with the Examiner that one skilled in the art would have been
motivated to use commercially available benzene to lower costs and simplify
the process. Ans. 7.
Appellants next contend that Alexanderson does not teach mixed acid
nitration of benzene to nitrobenzene which contains less than 5000 ppm
nitrotoluene isomers because the 0.06% of components unaccounted for may
results from other chemicals present other than toluene. Br. 17. We remain
unpersuaded. As the Examiner points out, any nitrotoluene isomers present
in the nitrobenzene described in Alexanderson would be included in the
0.06% impurities and would necessarily be less than 5000 ppm. Ans. 9.
Appellants argue that Cooke and Castner do not teach conversion of
nitrobenzene to aniline with less than 5000 ppm toluidine isomers as Cooke
and Castner only teach cyclohexylamine, cyclohexanone, cyclohexylidene,
and a benzene by-product as the impurities present. Br. 17. Appellants
contend that it is improper for the Examiner to assume that other impurities
are present. Id. We are unpersauded. As discussed above, the limitation of
less than 5000 ppm of toluidine isomers includes 0 ppm toluidine isomers.
Thus, if the only impurities contained in the products of Cooke and Castner
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are those recited in the references, they would still teach products have less
than 5000 ppm of toluidine isomers. See Ans. 10—11.
Turning to Welch and Soleta, Appellants contend that these references
do not address the deficiencies of the other references. Br. 17—18. This
argument is unpersuasive. As the Examiner has found, Strofer, Cooke,
Castner, Alexanderson, and Ash teach or suggest all of the steps of the
method recited in claim 1. Non-Final Act. 5—8. Thus there is no need to
rely on Welch or Soleta to remedy the alleged deficiencies of the other
references.
Finally Appellants contend that it is unexpected that benzene with a
purity below that of nitration grade benzene could be used to produce PMDI
without the need for additional processing. Br. 18. Once again, we are
unpersauded. As the Examiner points out, Appellants have not presented
any evidence to support this contention. Ans. 7—8. “[I]t is well settled that
unexpected results must be established by factual evidence. ‘Mere argument
or conclusory statements in the specification does not suffice.’” In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984)).
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious over Strofer
combined with either Cooke or Castner, further combined with
Alexanderson, Ash, Welch, and Soleta.
Claims 3,7, 12, 18, 19, 21, 22, and 24 have not been argued
separately and, therefore, fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the rejection under 35 U.S.C. § 112, first paragraph.
We affirm the rejection under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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