Ex parte Gallus et al.

Board of Patent Appeals and Interferences

Aug 30, 1999

08031793 (B.P.A.I. Aug. 30, 1999)

Application for patent filed March 15, 1993. 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journal and (2) is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MANFRED GALLUS, HERBERT GEBAUER
and OTTO IMMEL
____________
Appeal No. 95-3827
Application No. 08/031,7931
____________
ON BRIEF
____________
Before GARRIS, HANLON, and WALTZ, Administrative Patent
Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-16, all of the claims pending in the
application. The claims on appeal are directed to a process
for the production of an isocyanate or a mixture of
Appeal No. 95-3827
Application No. 08/031,793
2
isocyanates. Claim 1 is illustrative of the subject matter on
appeal and reads as follows:
1. A process for the production of an isocyanate or a
mixture of isocyanates which is substantially free of color
imparting material comprising treating a phosgenation product
of an amine with hydrogen at a pressure of from about 3 to
about 150 bar at a temperature of from about 100 to about
180°C for from about 15 minutes to about 4 hours in the
presence of a catalyst.
The sole reference relied upon by the examiner is:
Bruchmann 2,038,126 Sep. 15, 1991
(Canada)
The sole issue in this appeal is whether claims 1-16 were
properly rejected under 35 U.S.C. § 103 as unpatentable over
Bruchmann.
Discussion
The claimed invention is directed to a process for the
production of an isocyanate or a mixture of isocyanates which
is substantially free of color imparting material comprising
treating a phosgenation product of an amine with hydrogen at a
specific temperature and pressure for a period of time in the
presence of a catalyst.
Bruchmann discloses a method of improving the quality of
crude diaminodiphenylmethanes comprising the treatment thereof
Appeal No. 95-3827
Application No. 08/031,793
3
with hydrogen in the presence of a hydrogenation catalyst
(p.2). The conditions of the hydrogenation treatment are as
follows (p.3):
(1) Pressure: from 1 to 300 bar, preferably from 10 to
200 bar and more preferably from 20 to 60 bar;
(2) Temperature: from 20E to 400EC, preferably from 70E
to 320EC; and
(3) Time: from 10 minutes to 2 hours.
Compare appellants' specification, p.3, lines 8-13 ("the amine
corresponding to the desired isocyanate is phosgenated and the
resultant isocyanates or isocyanate mixtures are subjected to
a hydrogen treatment at a pressure of from about 3 to about
150 bar and a temperature of 100 to 180EC in the presence of a
catalyst for from about 15 minutes to about 4 hours").
Suitable catalysts include platinum and palladium (p.3;
compare appellants' specification, p.3, lines 20-24).
According to Bruchmann, the disclosed diaminodiphenylmethanes
are reacted with phosgene to produce the corresponding
diphenylmethane diisocyanates (p.1). The process disclosed in
Bruchmann is said to avoid any discoloration of the isosyanate
produced (p.2, lines 6-9). See Answer, p.2.
Appeal No. 95-3827
Application No. 08/031,793
4
According to the examiner (Answer, pp.2-3):
Bruchmann differs from the claims by performing
the hydrogenation step on amines, the isocyanate
compound precursor, rather than on the isocyanate
compound formed after phosgenation of the amine.
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to hydrogenate after phosgenation rather than before
because one would expect a purer product if the
purification step were performed on the product than
the intermediate.
We agree with appellants that the examiner has failed to
provide any factual basis for her conclusion that one having
ordinary skill in the art would have expected a purer product
or realized any other advantage if the purification step were
performed on the isocyanate rather than the corresponding
amine. Based on this record, there would have been no
motivation, absent appellants' disclosure, to hydrogenate the
isocyanate rather than the corresponding amine. See Brief,
p.5. Compare In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991) (in a determination under 35 U.S.C. §
103, the references themselves, rather than applicant's
disclosure, must provide some teaching whereby the applicant's
combination would have been obvious).
Appeal No. 95-3827
Application No. 08/031,793
5
The examiner further relies on In re Durden, F.2d 1406,
226 USPQ 359 (Fed. Cir. 1985), to establish the obviousness of
the claimed process (Answer, p.4):
[I]f one looks at the larger picture, the starting
materials are the same (polyamines) and the final
products are the same (polyisocyanates). The two
processes, hydrogenation and phosgenation, are just
switched so that hydrogenation is the second step
versus being the first step performed in converting
polyamines to polyisocyanates according to
Bruchmann.
Appellants dispute the applicability of Durden to the
facts in this appeal (Reply Brief, pp.2-3). Notwithstanding
appellants' argument, we emphasize that Durden has not
dispensed with the fact-intensive inquiry mandated by 35
U.S.C. § 103. See In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d
1127, 1132 (Fed. Cir. 1995) ("there are not 'Durden
obviousness rejections' or 'Albertson obviousness rejections,'
but rather only section 103 obviousness rejections"); see also
In re Brouwer, 77 F.3d 422, 426, 37 USPQ2d 1663, 1666 (Fed.
Cir. 1995). Therefore, to the extent that the process claimed
by appellants and the process disclosed in Bruchmann may yield
the same polyisocyanates, this fact alone holds little weight
in the rejection under 35 U.S.C.
Appeal No. 95-3827
Application No. 08/031,793
6
§ 103 before us. Absent a more factually specific statement
of the rejection, we cannot sustain the rejection of claims 1-
16 under 35 U.S.C. § 103 as unpatentable over Bruchmann. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992) (the examiner bears the initial burden of
presenting a prima facie case of unpatentability).
Appeal No. 95-3827
Application No. 08/031,793
7
Based on the record before us, the decision of the
examiner is reversed.
REVERSED
BRADLEY R. GARRIS
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
lp
Appeal No. 95-3827
Application No. 08/031,793
8
PATENT DEPARTMENT
MILES INC.
MOBAY ROAD
PITTSBURGH, PA 15205-9741
Leticia
Appeal No. 95-3827
Application No. 08/031,793
APJ HANLON
APJ GARRIS
APJ WALTZ
DECISION:
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: December 1, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT