Ex Parte Furuta et al

Patent Trial and Appeal Board

Jun 11, 2013

11406289 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SHOJI FURUTA,
YUSUKE SUGAHARA, KEIKO NAKASE, and KEISUKE MORI
__________

Appeal 2011-008895
Application 11/406,289
Technology Center 1600
__________

Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal
1
under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 11-16, 19-32, 34, and 35. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1
The Real Party in Interest is Asahi Glass Company, Limited (App. Br. 2).
Appeal 2011-008895
Application 11/406,289

2
STATEMENT OF THE CASE
Claim 11 is the only independent claim on appeal, and reads as
follows (emphasis added):
11. A process for producing a C6F13I fluoroalkyl iodide telomer,
comprising:
telomerizing tetrafluoroethylene (CF2CF2) taxogen with a fluoroalkyl
iodide telogen R
f
I selected from the group consisting of C2F5I, C4F9I, and
mixtures thereof, as a liquid phase mixture, in which the molar ratio of
R
f
I/TFE in the liquid phase mixture is from 20 to 200, by supplying a
homogeneous liquid mixture of the telogen and the taxogen into the lower
portion of a vertically aligned tubular reactor;
moving the reaction mixture from the lower portion of the reactor
towards the upper portion of the reactor in the presence of a peroxide or azo
radical initiator over a retention time of at least 10 minutes while the
reaction system in the reactor is kept in the liquid phase state under
conditions such that no gas-liquid separation takes place and the taxogen
supplied to the reactor is substantially consumed by the reaction in the
reactor; and
withdrawing the reaction product from the upper portion of the
reactor;
where the internal temperature of the tubular reactor is kept at a
temperature of 40 to 100°C, no more than 0.05% TFE taxogen remains in
the reaction product withdrawn from the upper portion of the reactor, the
concentration of the taxogen dissolved in the liquid telogen in said
homogeneous liquid mixture does not exceed the saturated concentration in
the liquid telogen, and the ratio of C8F17I/C6F13I in the reaction product at
the outlet of the tubular reactor is at most 10%.

Appeal 2011-008895
Application 11/406,289

3
The following ground of rejection is before us for review:
Claims 11-16, 19-32, 34, and 35 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Funakoshi
2
and
Paul
3
(Ans. 4).

ANALYSIS
The invention is drawn to a process “for producing a fluoroalkyl
iodide by telomerization and a fluoroalkyl iodide” (Spec. 1).
The Examiner rejects the claims over the combination of Funakoshi
and Paul (Ans. 4). As to the limitation of claim 11 that “the ratio of
C8F17I/C6F13I in the reaction product at the outlet of the tubular reactor is at
most 10%,” the Examiner relies on Funakoshi, finding that Funakoshi
“showed a conversion of 99.89% TFE [see Table 2] in their process” (id. at
6). The Examiner finds further that Funakoshi “also showed that the
component distribution in product (mol%) for C6F13I is 98.71 and for C8F17I
is 1.16 [see Table 4]” (id.).
Appellants argue that claim 11 “requires a ratio of C8F17I/C6F13I in the
reaction product at the outlet of the tubular reactor to be at most 10%,”
asserting that “[t]he prior art shows no interest whatsoever in producing a
product with a ratio of C8F17I/C6F13I of at most 10% and doing so
efficiently” (App. Br. 15). Specifically, Appellants assert that neither
Funakoshi nor Paul are interested in producing the C6F13I telomere, and thus
the prior art does not suggest the claimed process (id.).

2
Funakoshi et al., US 6,919,490 B2, issued Jul. 19, 2005.
3
Paul et al., US 5,068,471, issued Nov. 26, 1991.
Appeal 2011-008895
Application 11/406,289

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Appellants assert further in the Reply Brief that “[a]t no reaction
temperature from 40 to 100°C in Funakoshi’s Example 1 in Table 1 or
elsewhere at Funakoshi's preferred reaction temperature of 120°C is there
produced a ratio of C8F17I/C6F13I in the reaction product at the outlet of the
tubular reactor of 10% or less when the starting telogen is C2F5I, C4F9I, or
mixtures thereof in accordance with Applicant’s claimed process” (Reply
Br. 10). Specifically, Appellants assert that “Funakoshi’s Table 1 shows
production of C8F17I/C6F13I in the reaction product at the outlet of the
tubular reactor of 29% (0.0163/0.056) at 60°C., 31 % (0.0091/0.029) at
80°C., and 24% (0.012/0.049) at 100°C” (id. at 10-11).
As to Paul, Appellants argue
Paul’s Table at column 6, lines 54-56, for Comparative
Experiment A shows production of C8F17I/C6F13I in the reaction
product of >100% (0.123/0.117) at 92°C., Paul’s Table at
column 7, lines 41-43, for Example 1 shows production of
C8F17I/C6F13I in the reaction product of >200% (0.160/0.069) at
92°C., Paul’s Table at column 8, lines 7-10, for Comparative
Experiment B shows production of C8F17I/C6F13I in the reaction
product of >100% (0.150/0.145) at 94°C., and Paul’s Table at
column 8, lines 41-44, for Example 2 shows production of
C8F17I/C6F13I in the reaction product of >90% (0.187/0.190) at
94°C .. Paul’s results are not surprising because Paul's reaction
conditions are specifically designed to produce a product with
an “increase in the proportion of C8F17I” (Paul, col. 7, ll. 52-53;
col. 8, ll. 63-64).

(Id. at 11.)
We agree with Appellants, for the reasons set forth above, that the
Examiner has not established by a preponderance of the evidence that
Funakoshi, either alone or in combination with Paul, teaches the limitation
Appeal 2011-008895
Application 11/406,289

5
that “the ratio of C8F17I/C6F13I in the reaction product at the outlet of the
tubular reactor is at most 10%” as required by independent claim 11.
As to the Examiner’s finding that Table 4 of Funakoshi shows the
component distribution in product (mol%) for C6F13I is 98.71 and for C8F17I
is 1.16 (see Ans. 6), the starting product in that case was the end product
desired by claim 11, that is C6F13I (Funakoshi, col. 7, Table 4). That is, the
telomer had an “n” value of 2 in the formula C2F5(CF2CF2)nI, that is, the
starting telomere was C2F5(CF2CF2)2I, or C6F13I. The Examiner has not
explained how that component distribution in Example 4 of Funakoshi
relates to the claimed process, in which the starting product is C2F5I, C4F9I,
or mixtures thereof, and the product is C6F13I.

REVERSED

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