Ex Parte Koch et al

Board of Patent Appeals and Interferences

Apr 4, 2011

11171572 (B.P.A.I. Apr. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL KOCH, SPOTSWOOD MILLER, RICARDO SERRA,
DIETMAR WASTIAN, JURGEN KIRSCH AND GERHARD WEGENER
____________

Appeal 2010-001628
Application 11/171,572
Technology Center 1700
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-5 under 35 U.S.C. § 103(a) as
unpatentable over Alheritiere2 (US 3,544,611, issued Dec. 1, 1970) in view

1 Final Office Action mailed May 29, 2008 (“Final”).
2 Also referred to by the Examiner and Appellants as “Michelet.”
Appeal 2010-001628
Application 11/171,572
of Disteldorf (US 4,549,991, issued Oct. 29, 1985).3 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ arguments are limited to independent claim 1 (see
generally, App. Br. 3-8), which is reproduced below from the Claims
Appendix to the Appeal Brief:
1. A two-stage process for the production of an organic
isocyanate by reacting a primary amine with phosgene
comprising:

a) in a first stage, adiabatically reacting the amine and
phosgene in a temperature controlled reactor in which reaction
temperature is maintained between 100 and 220ºC by actively
adjusting absolute pressure in the reactor to values between 8
and 50 bar by decompression until at least 80 % of the
phosgene has been consumed, and

b) in a second stage, decompressing reaction mixture from
a) to an absolute pressure of 1 to 15 bar and further reacting the
decompressed reaction mixture at temperatures between 90 and
200ºC, optionally with the introduction of heat.

(App. Br. 10).
The Examiner finds Alheritiere discloses a process as claimed in
claim 1 with the exception that Alheritiere’s first stage is not conducted
under adiabatic conditions. (Ans.4 3-4.) The Examiner relies on Disteldorf
for a suggestion to conduct Alheritiere’s method under adiabatic conditions.
(Ans. 4.)

3 Appeal Brief filed Jan. 29, 2009 (“App. Br.”), p. 3.
4 Examiner’s Answer mailed Jun. 10, 2009.
2
Appeal 2010-001628
Application 11/171,572
Appellants advance several arguments in support of patentability.
(See App. Br. 4, 3rd para.) We limit our discussion to the following issue,
which we identify as dispositive of the appeal:
Did the Examiner reversibly err in determining Alheritiere suggests a
first step (a) in which a primary amine and phosgene are reacted until at least
80 % of the phosgene has been consumed? (See App. Br. 4; Rep. Br.5 2-3.)
The Examiner concedes Alheritiere does not explicitly teach a first
step (a) as recited in claim 1, but nonetheless determines Alheritiere suggests
a first step in which at least 80% of phosgene is consumed because
Alheritiere teaches product yields as high as 90%, and “a 90% conversion of
amine at a 1:1 molar ratio of phosgene:amine would result in 90%
consumption of phosgene.” (Ans. 5 (emphasis omitted).) The Examiner
concedes Alheritiere does not expressly teach a 1:1 molar ratio of
phosgene:amine, but notes Alhertiere also does not expressly preclude this
ratio. (Ans. 5.)
Appellants point out Alheritiere only discloses reacting “an amine . . .
with a large excess of phosgene” (App. Br. 3; see Alheritiere, col. 2, ll.
68-70 (“[A]n excess of from 100% or more [of phosgene], for example
between 150% and 350% over the theoretical amount” is desirable.”)), and
that phosgene consumption is much lower than 80% in Alheritiere’s
examples (Rep. Br. 2-3).
Appellants’ arguments have persuaded us that the Examiner’s
conclusion of obviousness is not supported by a preponderance of the
evidence of record. Accordingly, we do not sustain the rejection of claims

5 Reply Brief filed Aug. 10, 2009.
3
Appeal 2010-001628
Application 11/171,572
1-5 under 35 U.S.C. 103(a) as unpatentable over Alheritiere in view of
Disteldorf.
REVERSED

TC
BAYER MATERIAL SCIENCE LLC
100 BAYER ROAD
PITTSBURGH, PA 15205

4