Ex parte Dibiase et al.

Board of Patent Appeals and Interferences

Aug 19, 1997

07986878 (B.P.A.I. Aug. 19, 1997)

Application for patent filed December 4, 1992. According to1
appellants, this application is a continuation of Application 07/659,411 filed
March 11, 1991, now abandoned, which is a continuation of Application
PCT/US90/00815 filed February 21, 1990, which is a continuation-in-part of
Application 07/470,431 filed January 24, 1990, now abandoned, which is a
continuation of Application 07/319,011 filed March 3, 1989, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEPHEN A. DIBIASE, LARRY W. ARNDT,
GREGORY M. STANSFIELD and LOUIS A. RENBAUM
__________
Appeal No. 94-3371
Application 07/986,8781
__________
ON BRIEF
__________
Before JOHN D. SMITH, WEIFFENBACH and ELLIS, Administrative
Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 2-7, 9-17 and 73, which are
Appeal No. 94-3371
Application 07/986,878
Appellants have included new claims 74-77 in Appendix A of their Brief2
along with rejected claims 2-7, 9-17 and 73. Appellants state on page 1 of
their Brief that “[c]laims 74-77 have been submitted with the Amendment After
Final” which was filed concurrently with the Brief. Appellants were notified
via the Examiner’s Answer that the claims had not been entered. In the Reply
Brief, appellants noted that the examiner’s refusal to enter the new claims
and requested that the new claims be entered. The examiner’s refusal to enter
claims is a petitionable matter, and not reviewable by the Board Patent
Appeals and Interferences. See 37 CFR 1.181(a)(3) and Sections 706.01 and
1002.02(c)(4) of the Manual of Patent Examining Procedure, 6th Edition, Rev.
July 1996. Accordingly, claims 74-77 are not before us for consideration.
2
all of the claims remaining in the application. We affirm-in-2
part.
The Claimed Subject Matter
The claims on appeal are directed to a process for the
separation and recovery of isocyanate monomers. Claim 73 is
illustrative of the claimed subject matter:
73. A process for the separation and recovery of
isocyanate monomers from isocyanate concentrates formed
in the production of isocyanates and comprising a
volatile isocyanate monomer and by-products which
comprises the steps of:
(A) preparing a mixture comprising
(A-1) the isocyanate concentrate; and
(A-2) an oil solution comprising:
(A-2-a) a major amount of hydrocarbon oil,
and
(A-2-b) a minor amount of at least one
dispersant selected from the group consisting of (1) a
carboxylic dispersant prepared by reacting a
Appeal No. 94-3371
Application 07/986,878
3
substituted carboxylic acid or derivative thereof with
an amine having present within its structure at least
one >NH group, or a basic inorganic material, (2) an
amine dispersant prepared by reacting an aliphatic or
alicyclic halide with an amine, (3) a Mannich
dispersant, and (4) a product obtained by post-treating
(1), (2), or (3) with a member selected from the group
consisting of urea, thiourea, carbon disulfide, an
aldehyde, a ketone, a carboxylic acid, a hydrocarbon-
substituted anhydride, a nitrile, an epoxide, a boron
compound, and a phosphorus compound, provided that the
dispersant is not an ester obtained by reacting at
least one substituted succinic acylating agent with at
least one alcohol of the general formula
R (OH) (1)3 m
wherein R is a monovalent or 3
polyvalent organic group
joined to the OH groups through
carbon bonds, and m is an
integer of from 1 to about 10, and
(B) heating the mixture to an elevated
temperature whereby isocyanate monomer is distilled and
recovered, leaving a liquid residue.
The Prior Art and Rejections
The examiner relies upon the following prior art references
to support the rejections of the claims:
Nadler 2,810,681 Oct. 22, 1957
DiBiase et al. (DiBiase) 5,043,470 Aug. 27, 1991
The appealed claims stand rejected as follows:
1. Claims 2-7, 9-17 and 73 stand rejected under 35 U.S.C.
§ 103 as obvious over Nadler.
Appeal No. 94-3371
Application 07/986,878
The original final rejection under 35 U.S.C. § 103 included Irwin et3
al. (Patent No. 3,729,386). However, the examiner withdrew the reference as
being cumulative.
4
2. Claims 2-7, 9-17 and 73 stand rejected under 35 U.S.C.
§ 112, first paragraph, on the ground that “the disclosure is
enabling only for claims limited to the specifically disclosed
‘dispersant’.”
3. Claims 2-7, 9-17 and 73 stand rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1-55 of DiBiase.
Opinion
Appellants state that the claims do not stand or fall
together. On pages 6 and 7 of the Brief, appellants argue that
... neither Nadler nor Irwin et al alone or in3
combination disclose or suggest a process which uses a
dispersant and an overbased material as in Appellants’
claims 10 through 14.
Further, neither cited reference alone or in
combination disclose or suggest a process which uses a
dispersant and at least one metal salt of a
dihydrocarbyldithiophosphoric acid as in Appellants’
claims 15 through 17.
The examiner contends that claims 10-17 stand or fall together
because appellants’ arguments for separate patentability over the
Appeal No. 94-3371
Application 07/986,878
While the examiner contends that the appellants’ arguments for separate4
patentability of claims 10-17 are not substantial, on page 7 of the Answer, it
is noted that the examiner did respond to appellants’ arguments.
5
applied prior art are merely conclusions “without any substantial
reasons given” (Answer, page 2). 4
We note that appellants have not presented any arguments for
separate patentability for claims 2-7 and 9. In the absence of
such arguments, claims 2-7 and 9 are considered to stand or fall
together with independent claim 73. In re Nielson, 816 F.2d
1567, 1571, 2 USPQ2d 1525, 1527 (Fed. Cir. 1987); In re Wood, 582
F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978); Ex parte Schier, 21
USPQ2d 1016, 1018 (Bd. Pat. App. & Int. 1991). As for claims 10-
17, these claims will stand or fall separately to the extent that
separate patentability of these claims has been argued by
appellant in accordance with 37 CFR §§ 1.192(c)(5) and
(c)(6)(iv)(1993).
We have carefully considered the respective positions ad-
vanced by both appellants and the examiner for patentability of
the appealed claims. In so doing, we will affirm the rejection
for obviousness of claims 2-7, 9 and 73 over Nadler, but reverse
the rejection for obviousness with respect to claims 10-17. We
further find ourselves in agreement with appellants with regard
Appeal No. 94-3371
Application 07/986,878
6
to the obviousness-type double patenting and non-enabling
rejections that these rejections should be reversed.
Rejection for Obviousness
The examiner rejected claims 2-7, 9-17 and 73 as being
obvious over Nadler. Nadler relates to a method of recovering
toluene-2,4-diisocyanate (TDI) from a reaction mass (a tar
residue) which forms during the preparation of TDI (col. 1, lines
14-19). Although TDI is distilled from the reaction mass,
according to Nadler, “an appreciable quantity [of TDI] remains in
the concentrated viscous tar, from which complete removal by
simple distillation techniques is difficult” (col. 1, lines 27-
31).
To solve this problem, Nadler mixes the reaction mass with
an oil solution containing a hydrocarbon oil and a minor amount
of a dispersant (col. 1, lines 56-70). The amount of dispersant
in the oil solution is from 0.05% to 3.0% based on the weight of
the oil. The dispersant comprises a reaction product of two
components (col. 1, lines 18-29). The first component is amine
free and includes long chain alkyl methacrylates or unsaturated
dicarboxylic acid derivatives such as laurylethyl maleate or
laurylfumarate (col. 3, lines 30-39). The second component
contains a basic nitrogen and includes compounds such as
Appeal No. 94-3371
Application 07/986,878
7
diallylamine and “any other basic amino-nitrogen compound
including ... secondary ... amines ...” (col. 3, lines 40-49).
According to Nadler, the oil solution is mixed with an isocyanate
concentrate (crude reaction mixture) and then the mixture is
heated to an elevated temperature to distill and recover
isocyanate monomer from the concentrate (col. 1, line 70 to col.
2, line 38 and col. 2, line 60-66). In view of these teachings,
we find that Nadler would have suggested to one having ordinary
skill in the art the dispersants and the process claimed by
appellants in claims 2-9 and 73.
Appellants argue Nadler’s process differs from the claimed
process in that Nadler is using addition type copolymer
polyacrylate or polymethacrylates. As discussed supra, Nadler
discloses compounds other than alkyl acrylates or methylacrylates
such as unsaturated dicarboxylic acid derivatives, which
compounds come within the scope of appellants’ claimed (A-2-b-1)
substituted carboxylic acid component. By the same token, the
amine component of Nadler’s dispersant is not limited to
compounds such as beta-diethylaminoethyl methacrylate. A
secondary amine such as diallylamine is also suggested. We find
that the teachings of Nadler would have suggested to one of
ordinary skill in the art reacting an amine such as diallylamine
Appeal No. 94-3371
Application 07/986,878
8
with a dicarboxylic acid derivative (e.g. lauryl fumarate) to
form the claimed dispersant (col. 3, lines 18-50). Accordingly,
we will sustain the rejection of claims 2-7, 9 and 73 over
Nadler. However, we agree with appellants that Nadler does not
teach or suggest a process which uses a dispersant containing a
metal salt as set forth in appellants’ claims 10-17.
The examiner determined that claims 10-14 only require
“minor amounts” which can be interpreted as including “trace
amounts” of a metal salt. From this, the examiner concluded that
“Nadler includes dispersants produced from materials such as
carboxylic esters which are neutral acidic organic compounds and
it would be reasonable to assume that a minor amount, which
includes trace amounts, of the starting materials used to produce
the dispersants would remain therein” (Answer, page 7). We do
not agree.
The examiner has not provided any evidence or an analysis of
the prior art to support his conclusion. Cf. In re Brouwer, 77
F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re
Ochiai, 71 F.3d 1565, 1569-72, 37 USPQ2d 1127, 1131-33 (Fed. Cir.
1995). Moreover, original claim 60 in appellants’ specification
recites the amount of the metal salt added to be “from about 0.1
to about 20% by weight.” This amount would hardly be considered
Appeal No. 94-3371
Application 07/986,878
9
by a person skilled in the art to be a “trace amount.” For these
reasons, the examiner’s rejection of claims 10-14 over Nadler
under 35 U.S.C. § 103 is reversed.
As for claims 15-17, these claims require the dispersant to
include a “minor amount” of an additional component comprising a
metal salt of a dihydrocarbyldithiophosphoric acid. The
examiner’s position is that “the presence of ‘a minor amount’ of
an additional component is given no patentable significance since
‘a minor amount’ include trace amounts which would not materially
effect [sic, affect] the process” (Answer, page 7). Again, we do
not agree.
While claims are to be given their broadest reasonable
interpretation consistent with the specification, the claim
language should be read in light of the specification as it would
be interpreted by one having ordinary skill in the art. In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
On page 84 of the specification, appellants disclose that
[t]he oil solutions ... also may contain other useful
additives including metal dihydrocarbyl dithiophos-
phates, viscosity improvers, including those having
dispersant or detergent properties, compositions
generally referred to as friction modifiers when added
to oils, etc. When included in the oil solution, these
additives are present in amounts of from about 0.1 to
about 20%, more generally from 0.1 to about 10% by
weight. [Emphasis ours.]
Appeal No. 94-3371
Application 07/986,878
10
Again, an amount comprising about 0.1 to about 20% can hardly be
considered a “trace amount.” The examiner has not presented any
scientific reasoning to conclude that a “minor amount” of a
metal salt of a dihydrocarbyldithiophosphoric acid would not
materially affect the claimed process. Accordingly, for the
reasons given above the rejection of claims 15-17 under 35 U.S.C.
§ 103 over Nadler is reversed.
Non-Enablement Rejection
The examiner has found the claims to be non-enabling under
the first paragraph of 35 U.S.C. § 112 on the ground that “the
disclosure is enabling only for claims limited to the
specifically disclosed dispersant” (Answer, page 5). The
examiner concluded that undue experimentation would be required
because “the specification presents no correlation between
structure and function which would enable one of ordinary skill
in the art to reasonably predict which of the myriad dispersants
included by the claims would be useful and which would not be
useful” (Answer page 5). We will reverse this rejection for
essentially those reasons expressed in appellants’ Brief. The
examiner’s conclusion lacks supporting scientific reasoning
and/or evidence to persuade us that a correlation, or the lack
thereof, between structure and function is required to enable one
Appeal No. 94-3371
Application 07/986,878
11
skilled in the art to practice the invention. Appellants have
cited numerous patents in their specification for making the
claimed dispersants which we consider to be more than adequate to
convey to one skilled in the art how to make the dispersants and
to make a determination of which dispersants would be useful to
practice the ivention. For these reasons, we are unpersuaded
that undue experimentation would be required to make such a
determination.
Obviousness-Type Double Patenting Rejection
Claims 2-7, 9-17 and 73 have been rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1-55 of the DiBiase patent.
Appellants contend that the patent “teaches the use of a
dispersant which is a carboxylic ester prepared from a succinic
acylating agent and an alcohol” and that the claims herein “are
directed to specific dispersants which do not include the ester
dispersants of DiBiase et al.” (Brief, page 9). The examiner
concedes that the “conflicting claims are not identical,” but
that “they are not patentably distinct from each other because
the ‘dispersant’ is so broad in the instant claims as to include
homologs of the excluded ‘dispersant’ which are claimed in the
patent” (Answer, paragraph bridging pages 3 and 4). We will not
Appeal No. 94-3371
Application 07/986,878
12
sustain this rejection because the following negative limitation
in claim 73 appears to exclude the only dispersant recited in the
claims of DiBiase:
... provided that the dispersant is not an ester
obtained by reacting at least one substituted succinic
acylating agent with at least one alcohol of the
general formula
R (OH) (I)3 m
wherein R is a monovalent or polyvalent organic group3
joined to the OH groups through carbon bonds, and m is
an integer of from 1 to about 10 ....
The examiner has failed to provide any reasons for concluding
that the breadth of the claims on appeal would “include homologs
of the excluded ‘dispersant’.”
For the foregoing reasons, will reverse the examiner’s
rejection under the judicially created doctrine of obviousness-
type double patenting. However, we note that the negative
limitation in claim 73 excluding an ester obtained by reacting at
least one substituted succinic acylating agent with at least one
alcohol appears to be subject matter which may not comply with
the written description and best mode requirements of the first
paragraph of 35 U.S.C. § 112.
The negative limitation in claim 73 is not part of the
original disclosure, but was added by amendment during the
prosecution of the application. See Amendment A, Paper No. 6.
Appeal No. 94-3371
Application 07/986,878
13
While a negative limitation is not impermissible per se, it must
be definite and must comply with the written description
requirement of 35 U.S.C. § 112, first paragraph. Chisum on
Patents, Vol. 3, Chapter 8.06[3], page 8-144 (1997). See Ex
parte Hradcovsky, 214 USPQ 554, 555 (Bd. App. 1982); In re Duva,
387 F.2d 402, 408, 156 USPQ 90, 95 (CCPA 1967); In re Bankowski,
318 F.2d 778, 782-783, 138 USPQ 75, 79 (CCPA 1963). We do not
find the limitation to be indefinite, but it would appear that it
may not satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph.
To comply with the written description requirement, it is
not necessary that the invention be claimed using the same words
as in the specification. All that is required is that the
specification reasonably convey to a person of ordinary skill in
the art that as of the filing date of the application, the
inventors had possession of the subject matter later claimed. In
re Edwards, 568 F.2d 1349, 1351-1352, 196 USPQ 465, 467 (CCPA
1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA
1976); In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA
1971). The determination as to whether the specification
provides support for the newly claimed subject matter is
primarily factual and depends on the nature of the invention and
Appeal No. 94-3371
Application 07/986,878
14
the amount of knowledge imparted by the disclosure to those of
ordinary skill in the art. In re Wertheim, supra.
On pages 3, 4, 14 and 15, Appellants describe a dispersant
in the hydrocarbon oil mixture, which according to appellants is
a preferred embodiment of the invention. This dispersant is
identical to the dispersant set forth in the negative limitation
recited in claim 73, supra. Because claim 73 appears to exclude
the preferred ambodiment of the invention, a question arises as
to whether the inventors had possession of an invention excluding
the preferred embodiment at the time the application was filed.
Therefore, upon return of this application to the examiner, the
examiner should make a determination as to whether the negative
limitation set forth in claim 73 violates the written description
requirement of the first paragraph of 35 U.S.C. § 112 and whether
claims 2-7, 9-17 and 73 should be rejected thereover.
Conclusion
For the foregoing reasons, the decision of the examiner is
affirmed-in-part.
Appeal No. 94-3371
Application 07/986,878
15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOAN ELLIS )
Administrative Patent Judge)
Appeal No. 94-3371
Application 07/986,878
16
William C. Tritt
Renner, Otto, Boisselle and Sklar
1621 Euclid Avenuse
19th Floor
Cleveland, OH 44115