Ex parte Grossi et al.

Board of Patent Appeals and Interferences

Jan 13, 2000

08115388 (B.P.A.I. Jan. 13, 2000)

Application for patent filed September 2, 1993. 1
According to appellants, this application is a continuation of
Application 07/729,515, filed July 12, 1991, now abandoned.
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for publication in a law journal and (2) is not binding precedent of the Board.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.
16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTHONY V. GROSSI
and PAUL E. STOTT
____________
Appeal No. 1997-1992
Application No. 08/115,3881
____________
ON BRIEF
____________
Before KIMLIN, WARREN, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 10 and 15 through 20. Claims 1-9, 11, 13,
14 and 21, which are all of the remaining claims pending in
this application, stand withdrawn from further consideration
by the examiner as drawn to a non-elected invention.
Appeal No. 1997-1992 Page 2
Application No. 08/115,388
BACKGROUND
Appellants’ claimed invention relates to a method of
inhibiting polymerization during the distillation of acrylic
or methacrylic acid or ester by including an effective amount
of a polymerization inhibitor composition. The claimed
subject matter requires that the inhibitor composition
consists essentially of at least one N,N'-dinitroso
phenylenediamine compound of a specified formula and at least
one phenothiazine compound of a specified formula. Several
optionally selectable components may also be present. An
understanding of the invention can be derived from a reading
of exemplary claim 10, which is reproduced below.
10. A method for inhibiting the polymerization of an
acrylic or methacrylic acid or ester during distillation of
the acrylic or methacrylic acid or ester, which comprises
conducting the distillation in the presence of an effective
amount of a polymerization inhibitor composition consisting
essentially of:
(a) at least one N,N’-dinitroso phenylenediamine
compound
having the
structure:
Appeal No. 1997-1992 Page 3
Application No. 08/115,388
wherei
n R is
C -C1 12
alkyl
or C -6
C10
aryl;
R is1
C -C alkyl, C -C aryl, C -C aralkyl, or C -C alkaryl; and1 12 6 10 7 11 7 16
(b) at least one phenothiazine having the structure:
wherein R is hydrogen or C -C alkyl; and R and R are each2 3 41 12
independently selected from the group consisting of hydrogen,
C -C aryl, C -C aralkyl, C -C alkaryl and C -C alkyl;6 10 7 11 7 16 1 12
(c) optionally a hydroquinone or hydroquinone
monomethyl ether; and
Appeal No. 1997-1992 Page 4
Application No. 08/115,388
(d) optionally a phenylenediamine compound having
the
following structure
wherein R is C -C alkyl, C -C aryl or C -C alkaryl; and R ,6 71 12 6 10 7 16
R and R are independently selected from the group consisting8 9
of hydrogen, C -C alkyl, C -C cycloalkyl, C -C aralkyl and1 12 3 12 7 11
C -C alkaryl.7 16
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Tung 2,938,922 May
31, 1960
Appeal No. 1997-1992 Page 5
Application No. 08/115,388
All subsequent references in this opinion to Watanabe are2
a reference to the English language translation of the
Japanese Disclosure Bulletin of record.
Watanabe, Japan Pat. Disclosure Bulletin 49-124001 , Nov. 27,2
1974.
Otsuki et al. (Otsuki), Canadian Pat. No. 975708, Oct. 07,
1975
Claims 10 and 15-20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combined teachings of Otsuki,
Watanabe, and Tung.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, we reverse the stated rejection.
At the outset, we note that the examiner has the initial
burden of presenting a prima facie case of obviousness based
on the disclosure of the applied prior art. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
The claimed distillation method requires the presence of
a polymerization inhibitor composition that includes, as one
Appeal No. 1997-1992 Page 6
Application No. 08/115,388
component, at least one N,N'-dinitroso phenylenediamine
compound from among those specified in claim 10. The claimed
N,N'-dinitroso phenylenediamine compound must conform to the
formula specified in claim 10 and may include a C -C alkyl1 12
substituent on one of the amine groups and a C -C aryl6 10
substituent on the other amine group.
Our review of appellants' specification reveals that
appellants use the term "alkyl" as normally employed to refer
to open chain carbon substituents (radicals) of the specified
length that would have one less hydrogen atom than the
aliphatic hydrocarbon from which they may be derived. In this
regard, we note that appellants separately list cycloalkyl
groups and alkyl groups where both cyclic and acyclic groups
are intended to be included. See, e.g., page 6, line 20 of the
specification. Accordingly, in giving the claimed "alkyl" its
broadest reasonable interpretation, we determine that a
skilled artisan would interpret the claimed formula for
component (a) of the inhibitor composition of claim 10 as not
including N or N'
Appeal No. 1997-1992 Page 7
Application No. 08/115,388
cycloalkyl substituted N,N'-dinitrosophenylenediamines. See
In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989).
Turning our attention to the examiner's rejection, we
note that Otsuki and Watanabe are each generally concerned
with inhibiting polymerization of acrylic acids or their
derivatives during purification thereof, Otsuki specifically
being directed to such inhibition during distillation of
acrylic or methacrylic acid. Otsuki discloses that
phenothiazine, appellants' required composition component (b),
has polymerization inhibition activity in the liquid phase and
that hydroquinone or hydroquinone monomethyl ether,
appellants' optional component (c), have polymerization
inhibition activity in a distillation column when each are
used alone. Otsuki further teaches that using hydroquinone
monomethyl ether together with benzoquinone provides longer
polymerization suppression than either used alone (Table IV).
Otsuki does not teach the use of the claimed N,N'-
dinitrosophenylenediamine compounds alone or in combination
with other compounds for polymerization suppression as claimed
herein. While Watanabe discloses N,N'-
Appeal No. 1997-1992 Page 8
Application No. 08/115,388
dinitrosophenylenediamine compounds such as N,N-dinitroso-N-
cyclohexyl-N'-phenyl-p-phenylenediamine (page 4) which may be
used to inhibit polymerization of acrylic acid derivatives, an
alkyl substituted N,N'-dinitrosophenylenediamine compound
within the scope of the formula of component (a) of claim 10
is not described by Watanabe. We find that the examiner has
not adequately explained, on this record, why a skilled
artisan would have been led to use an N,N’-dialkyl-N,N'-
dinitrosophenylenediamine compound as part of a composition
within the scope of the claimed distillation process for
polymerization suppression. We cannot subscribe to the
examiner's position that Tung in combination with Otsuki and
Watanabe would have suggested the claimed distillation method.
In this regard, Tung discloses that various compounds
including some N,N'-dinitrosophenylenediamine compounds within
the scope of the appealed claim formula for component (a) are
useful in rubber compounding such as "... for controlling the
vulcanization of sulfur vulcanizable rubbers..." (column 4,
lines 22-24). In our view, Tung would not have suggested to
one of ordinary skill in this art that N-alkyl-N-nitroso
compounds can be used as polymerization inhibitors.
Appeal No. 1997-1992 Page 9
Application No. 08/115,388
Thus, outside of appellants' own specification, we cannot
find, on this record, a reasonable suggestion to use an N,N'-
dialkyl-N,N'-dinitrosophenylenediamine compounds in
combination with phenothiazine, as called for in claim 10, for
suppressing polymerization in the distillation of acrylic or
methacrylic acid or ester as claimed herein. Accordingly, we
agree with appellants that the applied prior art would not
have rendered the specifically claimed process herein prima
facie obvious without the impermissible use of hindsight
reasoning. See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960).
Therefore, for the above reasons, we find that the
examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of appellants’ claimed
invention.
Appeal No. 1997-1992 Page 10
Application No. 08/115,388
CONCLUSION
To summarize, the decision of the examiner to reject
claims 10 and 15-20 under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Otsuki, Watanabe,
and Tung is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
tdl
Appeal No. 1997-1992 Page 11
Application No. 08/115,388
Daniel Reitenbach
Law Department
Uniroyal Chemical Company, Inc.
World Headquarters
Middlebury, CT 06749
APPEAL NO. - JUDGE KRATZ
APPLICATION NO. 08/115,388
APJ KRATZ
APJ WARREN
APJ KIMLIN
DECISION: REVERSED
Prepared By: TINA
DRAFT TYPED: 07 May 01
FINAL TYPED: