11251640 (B.P.A.I. Jan. 27, 2011)

Ex Parte Elnagar et al

Board of Patent Appeals and InterferencesJan 27, 2011

11251640 (B.P.A.I. Jan. 27, 2011)

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. 11/251,640 10/17/2005 Hassan Y. Elnagar SU-7152-B 9469 7590 01/28/2011 Mr. Edgar E. Spielman, Jr. Law Department Albemarle Corporation 451 Florida Street Baton Rouge, LA 70801-1765 EXAMINER STOCKTON, LAURA LYNNE ART UNIT PAPER NUMBER 1626 MAIL DATE DELIVERY MODE 01/28/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte HASSAN Y. ELNAGAR, BRUCE C. PETERS, EDGAR E. SPIELMAN JR. and DUSTIN H. THOMAS __________ Appeal 2010-006044 Application 11/251,640 Technology Center 1600 __________ Before DONALD E. ADAMS, ERIC GRIMES, and STEPHEN WALSH, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 involving claims to a method of making halogenated hydantoins. The Examiner has rejected the claims as 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-006044 Application 11/251,640 2 obvious in view of the prior art. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses that N-halogenated hydantoins “are useful as cost-effective biocides especially for water treatment applications” (Spec. 3, ¶ 10). The Specification discloses a method of making N-halogenated hydantoins involving concurrent addition of reactants to a reaction zone (id. at 4, ¶ 12). The Specification states that “the term ‘concurrent’ does not imply that the feeds must start at exactly the same time or that they must stop at exactly the same period of time. Rather, the term is used in the sense that during substantially the entire reaction period, the designated feeds are being maintained.” (Id. at 24, ¶ 65.) Claims 1-47 are on appeal. Claim 1 is representative and reads as follows: 1. A process for the N-halogenation of at least one 5-hydrocarbyl hydantoin and/or at least one 5,5-dihydrocarbyl hydantoin, which process comprises concurrently feeding into a reaction zone (i) water, inorganic base, and at least one 5-hydrocarbyl hydantoin and/or at least one 5,5- dihydrocarbyl hydantoin, these being fed separately and/or in any combination(s), (ii) a separate feed of a brominating agent, and (iii) a separate feed of a chlorinating agent, in proportions such that during all or substantially all of the time the concurrent feeding is occurring halogenation of both nitrogen atoms of said 5-hydrocarbyl hydantoin and/or 5,5- dihydrocarbyl hydantoin occurs and resultant halogenated product precipitates in the liquid phase of an aqueous reaction mixture, and in which the pH of said liquid phase is continuously or substantially continuously maintained in the range of about 2.0 to about 8.0 during all or substantially all of the time the concurrent feeding is occurring. Appeal 2010-006044 Application 11/251,640 3 The Examiner has rejected claims 1-47 under 35 U.S.C. § 103(a) as obvious in view of nine references2 “each taken alone or in combination with each other” (Answer 5). The Examiner finds that each of the references discloses a method of making N-halogenated hydantoins by sequentially adding a brominating agent and a chlorinating agent to a reaction zone containing an alkyl hydantoin, water, and a base (id. at 5-14). The Examiner acknowledges that the references do not teach adding the reactants concurrently to the reaction zone (id. at 14-15), but concludes that the claimed process would have been obvious because “[i]t is obvious to add in ingredients simultaneously which were previously added sequentially. In re Tatincloux, 108 USPQ 125 (C.C.P.A. 1955).” (Id. at 15.) Appellants argue that none of the cited references teach or suggest concurrent feeding of a hydantoin and a halogenating agent, or concurrent feeding of both a brominating agent and a chlorinating agent, both of which are required by the claimed process (Appeal Br. 14-15). We agree with Appellants that the Examiner has not adequately explained why the claimed process would have been obvious to a person of ordinary skill in the art based on the cited references. As acknowledged by the Examiner, all of the cited references teach processes in which a brominating agent and a chlorinating agent are added sequentially to an aqueous alkaline hydantoin substrate. Bhattacharaya,3 in fact, states that [t]he standard method of making mixed halogenated organic products is to halogenate stepwise: isolating the product and subjecting the obtained product to the next halogenation step, 2 The reference citations are found on pages 3-4 of the Answer. 3 Bhattacharaya, WO 97/43264, published Nov. 20, 1997. Appeal 2010-006044 Application 11/251,640 4 and so on. By modification of the method applicable to preparing N-halo organic heterocyclic compounds, it is possible to prepare the mixed 1,3-dihalo-5,5-dialkylhydantoins. (Bhattacharya 9: 8-16, emphasis added.) In re Tatincloux, 228 F.2d 238 (CCPA 1955), does not support the Examiner’s conclusion that the claimed concurrent process would have been an obvious modification of the prior art sequential processes. As the court later clarified, in Tatincloux’s method, “the process steps involved were entirely physical in nature,” In re Freed, 425 F.2d 785, 787 (CCPA 1970), and the holding in Tatincloux did not support a conclusion that “the performance of [a] reaction in one step, as claimed, was made obvious by the prior performance of the same reaction in two steps.” Id. at 786. The Freed court thus held that the rule of law relied on by the Examiner in the present appeal did not apply to Freed’s modification of a chemical reaction, previously performed in two steps, to be performed in a single step. Put another way, a conclusion of obviousness is based on the facts in each case, rather than a per se rule. See id. (“In this, as in any case, a determination of obviousness must be based on facts and not on unsupported generalities.”). The Examiner has not pointed to any evidence of record in this case, or provided any scientific or logical rationale, to establish that a person of ordinary skill in the art would have had a reason to modify the known processes for making N-halogenated hydantoins in the manner recited in the claims on appeal. Therefore, the Examiner has not established a prima facie case of obviousness under 35 U.S.C. § 103. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008) (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed Appeal 2010-006044 Application 11/251,640 5 invention without any explanation as to how or why the references would be combined to produce the claimed invention.”). SUMMARY We reverse the rejection on appeal. REVERSED lp MR. EDGAR E. SPIELMAN, JR. LAW DEPARTMENT ALBEMARLE CORPORATION 451 FLORIDA STREET BATON ROUGE LA 70801-1765