Ex Parte Hagen et al

Board of Patent Appeals and Interferences

Sep 28, 2006

10606399 (B.P.A.I. Sep. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TORSTEN HAGEN, FRIEDHELM KAMPER,
DANIEL KOCH and HEINZ-HERBERT MULLER
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Appeal 2006-2775
Application 10/606,399
Technology Center 1700
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Decided: September 28, 2006
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Before GARRIS, WARREN, and JEFFREY T. SMITH, Administrative
Patent Judges.

JEFFREY T. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal the Examiner’s final rejection of claims 1, 9 to 11,
19, and 20. Claims 8, 18, and 20 to 24 have been indicated as containing
allowable subject matter (Br. 3). We have jurisdiction under 35 U.S.C.
§ 134.1

1 In rendering this decision, we have considered Appellants’ position
presented in the Briefs filed November 7, 2005 and March 27, 2006, and the
Examiner’s position presented in the Answer mailed January 30, 2006.
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We AFFIRM.
BACKGROUND
Appellants’ invention relates to a process for preparing polyamines of
the diphenylmethane series. The process comprises reacting aniline and
formaldehyde in the presence of an acid catalyst to form polyamines. The
reaction product is neutralized with a base and phase separated with an
alcohol forming an organic phase comprising polyamines of the
diphenylmethane series and an aqueous phase. In an alternative embodiment
the invention is directed to a process of preparing polyisocyanates of the
diphenylmethane series. This process includes all the process steps
identified above and phosgenating the polyamines from the organic phase
into the corresponding polyisocyanate. Representative claims 1 and 11, as
presented in the Brief, appear below:
1. A process for the preparation of polyamines of the
diphenylmethane series, comprising
a) reacting aniline and formaldehyde in the presence of an acid
catalyst to form polyamines,
b) neutralizing the reaction mixture with a base, and
c) phase separating the neutralized reaction mixture, thereby
forming an organic phase comprising polyamines of the
diphenylmethane series and an aqueous phase,
wherein the quantity of base in step b) exceeds 100% of the
stoichiometrically required quantity for neutralization of the reaction
mixture, and wherein at least one alcohol is added (1) at the beginning
of step b), (2) during step b), or (3) after step b) and before step c),
with the molar ratio of said alcohol to said formaldehyde being at least
0.02:1.

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11. A process for the preparation of polyisocyanates of the
diphenylmethane series comprising
a) reacting aniline and formaldehyde in the presence of an acid
catalyst to form polyamines,
b) neutralizing the reaction mixture with a base,
c) phase separating the neutralized reaction mixture, thereby
forming an organic phase comprising polyamines of the
diphenylmethane series and an aqueous phase,
and
d) phosgenating the resultant polyamines into the corresponding
polyisocyanates,
wherein the quantity of base in step b) exceeds 100% of the
stoichiometrically required quantity for neutralization of the reaction
mixture, and wherein at least one alcohol is added (1) at the beginning of
step b), (2) during step b), or (3) after step b) and before step c), with the
molar ratio of said alcohol to said formaldehyde being at least 0.02:1.

CITATION OF REFERENCE
The Examiner relies on the following reference in rejecting the
appealed claims:
Adkins 5,312,971 May 17, 1994
Claims 1, 9 to 11, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as obvious over Adkins (Answer 3-5).

OPINION2
The Examiner found that Atkins teaches a process for preparing
polyisocyanates that renders obvious the subject matter of the independent

2 We select independent claims 1 and 11as representative of the appealed
claims. We will also address the separately argued claims 10 and 20.

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claims (Answer 3-4). Appellants acknowledge that Adkins, like the
presently claimed invention, discloses the preparation of polyisocyanates of
the diphenylmethane series (Br. 5). Appellants argue that the present
invention requires the addition of an alcohol to the process of preparing the
polyamides before the phase separation of step c) (Br. 5). Appellants argue
that Adkins does not disclose or suggest adding an alcohol during the
preparation of the polyamides (Br. 5).
Appellants’ arguments are not persuasive. Adkins discloses that an
alcohol is necessary to quench the mixture when using a highly reactive
reducing agent. Suitable alcohols include methanol. See col. 2, ll. 21 to 29.
Appellants acknowledge this disclosure on page 6 of the Brief. The
Examiner has determined that Adkins suggests the addition of the methanol
after neutralization and before phase separation (Answer 3-4). Appellants
have not refuted the Examiner’s position in the Briefs.
Appellants argue that Adkins does not disclose that methanol could be
effective when it is added to the polyamines in reducing the color value of
the resulting polyisocyanate (Br. 6). This argument is not persuasive
because it is not limited to the scope of the claimed invention. That is, the
invention disclosed by the independent claims, 1 and 11, do not exclude the
use of reactive reducing agents in combination with methanol.3

3 The independent claims employ the transitional phrase “comprising.” This
transitional phrase is entitled to its customary usage in claim interpretation,
thus opening the claimed method to include unspecified additional steps and
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Appellants’ arguments about the results achieved in the Adkins
examples have been considered. These arguments are not persuasive
because, as stated above, the claimed invention does not exclude the use of
methanol in combination with a reducing agent. Moreover, the results
achieved in Adkins’ examples do not detract from the statements appearing
in column 2 of the reference that discloses the suitability of using methanol
as a quench in the disclosed invention.
The Examiner asserts that the 2,6-di-tert-butyl-4-methylphenol
disclosed by Adkins as a reducing agent would meet the requirement for at
least one alcohol as specified in independent claims 1 and 11. It is the
Examiner’s position that a phenol is an alcohol (See Answer 5). Appellants
argue that “[e]ven if one technically considers phenol to be an alcohol, its
properties are quite different than the general properties of alcohols. It is
submitted by Appellants, that this reference does not specifically disclose
phenol. Rather, it discloses hindered phenols” (Br. 8).
We agree with the position presented by the Examiner. A review of
the present specification does not limit the characteristics of the alcohol
component. That is, the claimed invention is not limited to the general
properties of alcohols as argued by Appellants. The Specification, page 6,
provides a list of preferred alcohol components. This list discloses a
preference for certain alcohol species; however, it does not expressly

ingredients. See, e.g., In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795,
802-03 (CCPA 1981).
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exclude the use of phenols. As such, Appellants’ arguments are not
persuasive.
Appellants’ arguments regarding claims 10 and 20 have been fully
considered. Claims 10 and 20 further define the independent claims, 1 and
11 respectively, by providing a list of suitable alcohol components. The list
of suitable alcohol components includes methanol. As discussed above,
methanol is disclosed by Adkins to be suitable for the disclosed process.
CONCLUSION
Based upon consideration of the present record, including all of
Appellants’ arguments presented in the Briefs, we determine that the
Examiner has established a prima facie case of obviousness which has not
been adequately rebutted by Appellants. Accordingly, we affirm the
rejection of claims 1, 9 to 11, 19, and 20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2004).
AFFIRMED

Appeal 2006-2775
Application 10/606,399

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