Ex Parte Kissinger

Board of Patent Appeals and Interferences

Jan 23, 2002

08509891 (B.P.A.I. Jan. 23, 2002)

1 Application for patent filed 1 August 1995. The real party in interest
is General Electric Company, GE Plastics Division, of Pittsfield, MA (Paper 13,
Appeal Brief, page 1).
2 To the extent these findings of fact discuss legal issues, they may be
treated as conclusions of law.
The opinion in support of the decision being
entered today is not binding precedent of the board
Paper 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GAYLORD M. KISSINGER
____________
Appeal 2001-0455
Application 08/509,8911
____________
Before: McKELVEY, Senior Administrative Patent Judge,
and SCHAFER and LEE, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
The appeal is from a decision of a primary examiner
rejecting claims 1-5. We affirm, but make a recommendation
pursuant to 37 CFR § 1.196(c).
A. Findings of fact
The record supports the following findings by at least a
preponderance of the evidence.2
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The claims
1. The application on appeal contains claims 1-5.
2. According to applicant (Appeal Brief, page 4),
dependent claims 2-5 stand or fall with independent claim 1.
3. Claim 1 reads (matter in [brackets] added):
A process for purification of diaryl carbonates, which
comprises:
[1] providing a crude solution of diaryl carbonate in
admixture with contaminant by-products of a diaryl carbonate
preparation;
[2] cooling the solution to a temperature of about
1-2°C below the nucleation temperature of the diaryl
carbonate whereby nucleation occurs;
[3] subsequently further cooling the solution
containing nucleated diaryl carbonate at a controlled rate,
between about 0.01 to 1.0°C per minute whereby crystals of the
diaryl carbonate form in a residue of cooled solution;
[4] separating the residue of cooled solution from the
formed crystals of the diaryl carbonate;
[5] heating the separated crystals at a controlled
rate to their melt temperature, incrementally;
[6] separating sweat exuding from the heated crystals
in each increment; and
[7] collecting the melted crystals to obtain high
purity diaryl carbonate.
The rejection
4. The examiner has rejected claims 1-5 as being
unpatentable under 35 U.S.C. § 103(a) over Shafer, U.S. Patent
5,239,106 (1993).
3 Col. 1, lines 12-14: "The present invention relates to a method for
recovering diphenylcarbonate in substantially pure form from a solution of
diphenylcarbonate and phenol." Thus, both applicant and Shafer have as an
ultimate objective recovery of essentially pure diphenyl carbonate.
4 Col. 2, line 1. The diphenyl carbonate would contain contaminants from
its preparation (col. 2, lines 61-63).
5 Col. 1, line 66 to col. 2, line 4.
6 According to Example 1 in the specification, the nucleation
(crystallization) temperature of diphenyl carbonate is 53.8°C
(specification, page 6, line 32). Further according to Example 1, the
crude diphenyl carbonate was cooled to 53°C, which is about "1-2°C" below
the nucleation temperature of diphenyl carbonate.
According to Shafer, adduct crystals form at 51°C. Shafer also
describes cooling to a temperature of 50°C to 25°C, with 50°C being 1°C
below the crystallization temperature of the adduct.
7 Shafer describes lowering the temperature in stages, for example a
first stage at 44.5°C to obtain a certain level of crystallization, followed by
a second stage at 37°C to provide additional level of crystallization (col. 2,
lines 36-53).
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5. Shafer is prior art vis-a-vis applicant under
35 U.S.C. § 102(b).
Shafer
6. Shafer describes a process very similar to that of
applicant's claim 1.
7. With reference to the language of applicant's
claim 1, Shafer describes the following:
A process for purification of diaryl carbonates 3, which
comprises:
[1a] providing [a] a crude solution of diaryl carbonate
in admixture with contaminant by-products 4 of a diaryl
carbonate preparation and [b] sufficient phenol so as to be
able to form a crystalline 1:1 molar diphenyl carbonate to
phenol adduct;5
[2] cooling the solution to a temperature of about
1-2°C below the nucleation temperature 6 of the diaryl
carbonate at a controlled rate,7 between about 0.01 to 1.0°C
8 The examiner acknowledges that Shafer does not describe the rate at
which temperature is lowered (Paper 14, Examiner's Answer, page 4).
9 The crystalline diphenyl carbonate-phenol adduct is recovered from the
crystallization solution (col. 2, line 21--step (2); see also col. 4,
lines 3-6).
10 Shafer describes heating to preferably 60°C to 120°C (col. 2, line 56;
see also col. 4, lines 6-8).
11 According to Shafer, a crystalline diphenyl carbonate phenol adduct at
40°C was heated to 120° to effect separation of phenol (col. 4, lines 6-9). In
heating from 40°C to 120°C heating occurred over time. Phenol was constantly
being separated over time.
12 As noted in the previous note, phenol was removed over time during
distillation.
13 Ultimately, diphenyl carbonate was recovered (col. 4, line 9).
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per minute8 whereby crystals of the diaryl carbonate form in
a residue of cooled solution;
[3] separating the residue of cooled solution from the
formed crystals of the diaryl carbonate; 9
[4] heating10 the separated crystals at a controlled
rate11 to their melt temperature, incrementally;
[5] separating sweat12 exuding from the heated
crystals in each increment; and
[6] collecting the melted crystals to obtain high
purity diaryl carbonate.13
Difference
8. As noted by the examiner, the difference between
Shafer and claim 1 is that claim 1 requires cooling at a
controlled rate, between about 0.01 to 1.0°C per minute, whereas
Shafer does not describe the precise rate at which cooling takes
place.
14 The level of skill in the art provides substantial evidence for the
examiner's rather cryptic holding that "[c]hanging the rate at which a lower
temperature is reached is an obvious variation" (Examiner's Answer, page 4).
Given the discussion by Shafer, what the examiner probably intended to say was
that determining the rate at which the temperature should be lowered to obtain
acceptable results for a given process is a matter within the skill of the art
to be determined on a case-by-case basis.
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Level of skill in the art
9. Shafer provides considerable guidance to those
having ordinary skill in the art with respect to cooling (col. 2,
lines 26-58).
10. For example, Shafer describes adduct
crystallization in two stages (col. 2, lines 44-46), each stage
using different temperatures (col. 2, line 48 and 52).
11. From Shafer, one having ordinary skill in the art
would learn that the rate and yield of crystallization is a
function of how crystallization is effected over different
temperatures.14
12. Shafer suggests to one skilled in the art that
lowering the temperature incrementally is a suitable method of
effecting cooling and that the rate of cooling is a matter to be
determined on a case-by-case basis.
13. Applicant, on this record, has not established
that the rate at which temperature is lowered is in any way
critical to obtaining the result sought by the process, i.e.,
essentially pure diphenyl carbonate.
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B. Discussion
1.
We have found that there is one difference between the prior
art, cooling at a particular rate, but that Shafer suggests to
one skilled in the art that cooling occur incrementally.
We agree with the examiner that the precise rate of cooling
is not described by Shafer--if it were, then the examiner would
have rejected claim 1 under 35 U.S.C. § 102 over Shafer.
However, we also find that Shafer tells one skilled in the art
that incremental cooling is one way to effect crystallization.
We further find that Shafer would suggest to one skilled in the
art that for any given process the degree at which the material
is cooled is a result oriented variable to be determined by one
skilled in the art on a case-by-case basis through routine
experimentation. Cf. In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that
the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range). Substantial evidence supports the examiner's § 103
rejection.
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2.
Applicant's principal, if not only, argument on appeal
claiming that the rejection is "incorrect" (Appeal Brief, pages
5-6) is that Shafer involves co-crystallization of diphenyl
carbonate with a solvent--phenol. As noted by applicant (Appeal
Brief, page 5: "the process disclosed in Shafer relies on
crystallizing DPC [diphenyl carbonate] with a phenol solvent to
form 1:1 molar crystals, and subsequently distilling off the
phenol." Applicant tells us that his claimed process (1) does
not employ a solvent (i.e., phenol), (2) does not involve forming
an adduct, and (3) merely heats the crystals to their melting
point rather than distilling off a solvent (Appeal Brief, page
6).
The difficulty with applicant's arguments is that claim 1
does not exclude the steps which applicant says claim 1 does not
cover.
It is true that claim 1 does not "employ", i.e., expressly
call for adding, a solvent such a phenol. However, adding phenol
to the crude diphenyl carbonate containing contaminants is not
excluded by claim 1.
It is further true that claim 1 does not mention formation
of an adduct. However, formation of an adduct is not excluded
from the claim.
It is still further true that claim 1 does not mention
distilling off phenol. However, distilling off phenol is not
excluded by claim 1. Moreover, in reaching the temperature to
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distill off phenol the Shafer process reaches a temperature which
is at least equal to the melt temperature.
C. Recommendation under 37 CFR § 1.196(c)
We think that the difficulty with the appeal is that
applicant has presented a claim which is too broad in the sense
of 35 U.S.C. § 103(a). On the record before us, it is our view
that claim 1 includes subject matter which would have been
obvious and subject matter which would not have been obvious.
Hence, claim 1 is not patentable. Cf. In re Muchmore, 433 F.2d
824, 167 USPQ 681 (CCPA 1970) (claims which include obvious
subject matter and non-obvious subject matter are not patentable
under § 103).
The specific problem with claim 1 is that claim 1 does not
preclude providing a solution of diphenyl carbonate, contaminants
and phenol albeit that it is clear from applicant's arguments on
appeal, and perhaps the specification, that applicant does not
seek to cover a process which uses an adduct. In this respect,
we recommend that applicant consider amending claim 1 to read as
follows (matter in [brackets] and bold added to claim 1:
A process for purification of diaryl carbonates, which
comprises:
[1] providing a crude solution [consisting] of [a]
diaryl carbonate in admixture with [b] contaminant by-
products of a diaryl carbonate preparation;
[2] cooling the solution to a temperature of about
1-2°C below the nucleation temperature of the diaryl
carbonate whereby nucleation occurs;
15 Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("consisting of"
closes the claim to inclusion of materials other than those recited except
for impurities ordinarily associated therewith).
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[3] subequently further cooling the solution
containing nucleated diaryl carbonate at a controlled rate,
between about 0.01 to 1.0°C per minute whereby crystals of the
diaryl carbonate form in a residue of cooled solution;
[4] separating the residue of cooled solution from the
formed crystals of the diaryl carbonate;
[5] heating the separated crystals at a controlled
rate to their melt temperature, incrementally;
[6] separating sweat exuding from the heated crystals
in each increment; and
[7] collecting the melted crystals to obtain high
purity diaryl carbonate.
The phrase "consisting of" is a transition phrase commonly
used in claims to signal a closed claim, 15 and in the case of
our suggested claim to signal closing only one clause of a
multi-clause claim. Cf. (1), Manual of Patent Examining
Procedure, § 2111.03 (8th ed. Aug. 2001), (2) Mannesmann Demag
Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279,
1282, 230 USPQ 45, 46 (Fed. Cir. 1986) ("consisting" within
element (a) of a claims with elements (a) through (d) limited
only element (a); the district court correctly observed that the
phrase "consisting of" appears in clause (a), not the preamble of
the claim and thus limits only the element set forth in clause
(a) and (3) Berenter v. Quigg, 737 F.Supp. 5, 14 USPQ2d 1175
(D.D.C. 1988) (claim with "comprising" in preamble and
"consisting of" in one step; step limited because of consisting
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of; "A method *** comprising identifying said first habitat, and
applying lethally effective amount of pesticide to an area
consisting of said first habitat, whereby ***.").
A review of the invention described in applicant's
specification would suggest that applicant intends to recover
diaryl carbonate solely from a mixture of (a) diaryl carbonate
and (b) contaminant by-products of a diaryl carbonate
preparation. As observed in the Appeal Brief (page 6) and the
Reply Brief (page 2), while "contaminants" might include small
amounts of residual phenol, "contaminants" would not include
adding sufficient phenol to make an adduct having a 1:1 molar
ratio of diaryl carbonate to phenol. Adding large amounts of
phenol would be inconsistent with step [1] of the process as set
out in our suggested claim. While claim 1 as presented on appeal
does not preclude the addition of other materials, claim 1 as
suggested would not permit other material to be added, including
additional phenol as set out in step [1a] supra (Finding 7) in
our opinion because to do so would contravene the solution to be
treated as defined in step [1] of our suggested claim.
D. Order
Upon consideration of the appeal, and for the reasons given,
it is
ORDERED that the examiner's rejection of claims 1-5 as
being unpatentable under 35 U.S.C. § 103(a) over Shafer is
affirmed.
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FURTHER ORDERED that a recommendation is made pursuant
to 37 CFR § 1.196(c) to authorize applicant to amend claim 1 as
set out in Part C of our opinion.
FURTHER ORDERED that if applicant desires to amend
claim 1 as suggested then within one (1) month of the date of
this decision applicant shall present an amendment (to be filed
with the board by fax at 703-305-0942) making the suggested
amendment to claim 1.
FURTHER ORDERED that no time period for taking any
subsequent action in connection with this appeal, including
presentation of the amendment to claim 1 authorized herein, may
be extended under 37 CFR § 1.136(a).
AFFIRMED.
(37 CFR § 1.196(c))
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
JAMESON LEE )
Administrative Patent Judge )
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cc (via Federal Express)
John L. Young, Esq.
GENERAL ELECTRIC COMPANY
One Plastics Avenue
Pittsfield, MA 01201