Ex Parte Hewitt

Board of Patent Appeals and Interferences

Mar 19, 2003

08809719 (B.P.A.I. Mar. 19, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRADLEY D. HEWITT
___________
Appeal No. 2001-2272
Application No. 08/809,719
__________
ON BRIEF
__________
Before WINTERS, WILLIAM F. SMITH, and ADAMS, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting claims 18 through
35, which are all of the claims remaining in the application.
Representative Claim
Claim 18, which is illustrative of the subject matter on appeal, reads as follows:
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Application No. 08/809,719
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The Prior Art References
In rejecting the appealed claims under 35 U.S.C. § 103(a), the examiner relies
on the following prior art references:
Mitsubishi Chem. Ind. Ltd. (Mitsubishi)
(Japan Kokai Patent Appln.) 56-152498 Nov. 26, 1981
Semmelhack et al. (Semmelhack), "Oxidation of Alcohols to Aldehydes with Oxygen
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Page 3
and Cupric Ion Mediated by Nitrosonium Ion," J. Am. Chem. Soc., Vol. 106, pp. 3374-
3376 (1984)
Anelli et al. (Anelli), "Fast and Selective Oxidation of Primary Alcohols to Aldehydes or
to Carboxylic Acids and of Secondary Alcohols to Ketones Mediated by Oxoammonium
Salts Under Two-Phase Conditions," J. Org. Chem., Vol. 52, pp. 2559-2562 (June 12,
1987
The Rejections
All of the appealed claims stand rejected (1) under 35 U.S.C. § 112, second
paragraph, as indefinite; and (2) under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Mitsubishi, Anelli, and Semmelhack.
Deliberations
Our deliberations in this matter have included evaluation and review of the
following materials: (1) the instant specification, including all of the claims on appeal;
(2) applicants' Appeal Brief (Paper No. 13) and the Reply Brief (Paper No. 15);
(3) the Examiner's Answer (Paper No. 14); (4) the above-cited prior art references;
and (5) the Hewitt declaration, filed under the provisions of 37 CFR § 1.132, executed
July 8, 1998.
On consideration of the record, including the above-listed materials, we reverse
the examiner's rejections under 35 U.S.C. § 112, second paragraph, and 35 U.S.C.
§ 103(a).
Discussion
Independent claim 18 recites "a temperature range of about - 10° to about 15°."
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Likewise, dependent claim 28 recites "the temperature is [sic] range is from about -5 to
about 5°;" and, again, dependent claim 30 recites "cooling to about - 10° to about 15°."
Respecting all these claim recitations, the examiner argues that "[i]t is unclear what
temperature scale is intended by the claim [sic] invention." (Paper No. 14, page 4). We
disagree.
As stated in In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983)
It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation
consistent with the specification, and that claim language should be read
in light of the specification as it would be interpreted by one of ordinary
skill in the art. [citations omitted]
Here, applicant's specification clearly states that "[a]ll temperatures are in degrees
Centigrade" (specification, page 3, line 31). Accordingly, when applicant's claim
language is read in light of the specification as it would be interpreted by one of ordinary
skill in the art, we think that there can be no doubt that all temperatures are in degrees
Centigrade.
The rejection of claims 18 through 35 under 35 U.S.C. § 112, second paragraph,
is reversed.
The premise of the examiner's prior art rejection is that Anelli discloses the use
of 2,2,6,6-tetramethylpiperidine-1-oxyl (TEMPO) in the oxidation of primary alcohols to
aldehydes. See Paper No. 14, page 5, second complete paragraph ("Anelli et al. teach
the oxidation of primary alcohols to the corresponding aldehydes in the presence of
tetramethyl-piperidine-1-oxyl-[TEMPO], methylene chloride, sodium hypochlorite,
sodium bicarbonate and potassium bromide (see the entire article)"). The examiner
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argues that Semmelhack discloses the art-recognized equivalence of TEMPO and
4-hydroxy-TEMPO; and that it would been prima facie obvious to substitute 4-hydroxy-
TEMPO for TEMPO in the process of Anelli, per the teachings of Semmelhack. The
examiner further argues that it would have been obvious to use Anelli's process
conditions, modified with 4-hydroxy-TEMPO in lieu of TEMPO, in carrying out the
oxidation of bisnoralcohol to bisnoraldehyde disclosed by Mitsubishi. The examiner
concludes that a person having ordinary skill would have arrived at applicant's claimed
process based on the combined disclosures of Mitsubishi, Anelli, and Semmelhack.
We disagree.
In our judgment, the premise of this rejection is incorrect and, accordingly, the
rejection must fall. More specifically, Anelli does not disclose the use of TEMPO in the
oxidation of primary alcohols to aldehydes. Rather, Anelli's disclosure is restricted to
the use of 4-methoxy-TEMPO, identified in the reference as compound 3b. Where, as
here, the examiner has misapprehended the scope and content of the prior art; where
the teaching attributed to Anelli is not found in Anelli; and where the examiner's reliance
on Anelli is essential to the rejection under 35 U.S.C. § 103(a), we shall not sustain that
rejection.
On this record, we conclude that the examiner has not established a prima facie
case of obviousness of claims 18 through 35. Accordingly, we find it unnecessary to
discuss the Hewitt declaration, filed under the provisions of 37 CFR § 1.132, and relied
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1 We are mindful that applicant characterizes Anelli as disclosing TEMPO
(specification, page 1, line 11). As stated in the text of this opinion, however, Anelli's
disclosure is restricted to the use of 4-methoxy-TEMPO (compound 3b). In the Hewitt
declaration, page 2, first full paragraph, declarant states that Anelli discloses the use of
4-methoxy-TEMPO. Conspicuous by its absence from the declaration is a statement
that Hewitt discloses the use of TEMPO in the oxidation of primary alcohols to
aldehydes.
on by applicant as rebutting any such prima facie case.1
The rejection of claims 18 through 35 under 35 U.S.C. § 103(a) is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Donald E. Adams )
Administrative Patent Judge )
Appeal No. 2001-2272
Application No. 08/809,719
Page 7
Bruce Stein
Intellectual Property Law
Pharmacia & Upjohn Inc.
Kalamazoo, MI 49001
dem