Ex Parte Lautenbach et al

Board of Patent Appeals and Interferences

Aug 24, 2010

10502697 (B.P.A.I. Aug. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HOLGER LAUTENBACH,
ADOLF KASER, and MICHAEL HENEGHAN
______________

Appeal 2009-009249
Application 10/502,697
Technology Center 1700
_______________

Before EDWARD K. KIMLIN, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-14 in the Office Action mailed April 21,
2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2008).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009249
Application 10/502,697
We affirm-in-part the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of an aqueous dye solution
comprising at least 5 to 30% by weight of the dye compound of formula (1),
0.05 to 5% of the compound of formula (2), any amount of an organic or
inorganic base or mixtures of bases and, optionally, any matter of “further
additives,” and the balance water. Claim 1 is representative of the claims on
appeal:
1. An aqueous dye solution, comprising
a) 5 to 30% by weight of a dye of the formula

in which
K is a residue of a coupling component of the acetoacetanilide, pyridone,
pyrazolone or pyrimidine series and
M is hydrogen, an alkali metal or alkaline earth metal, ammonium or
alkylammonium,
b) 0.05 to 5% by weight of one or more compounds of the formula

in which
A represents –NR1,R2, –NHCOR1, –CN, halogen, –NO2, –OH, –OR1,
hydrogen, C1-C4alkyl, C2-C4alkenyl, C2-C4alkinyl, –CO2M, -CO2R1 or –
CONR1R2, wherein R1 and R2 each, independently of one another, represent
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Application 10/502,697
hydrogen or C1-C4alkyl and M is as previously defined, or is a residue of the
formula

X represents O, S or NR1, R1 being as previously defined;
Y represents N or CR1, R1 being as previously defined and
P, Q and R each, independently of one another, represent hydrogen, C1-
C4alkyl, –SO3M, –PO3M, –CO2M, –OH, –NO2 or –COR1, M and R1 being as
previously defined,
c) an organic or an inorganic base or mixtures thereof,
d) optionally, further additives and
e) water.
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1 through 12 over
Hildreth (GB 1,593,859); and claims 13 and 14 over Cooper (WO 98/49014
A1) in view of Zemsky (US 5,149,138). App. Br. 7; Ans. 4 and 5.
Appellants argue the claims in each ground of rejection as a group.
See generally App. Br. Thus, we decide this appeal based on claims 1 and
13. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Opinion
We find that Hildreth would have described to one of ordinary skill in
the art diazotizing an amino-containing compound within Hildreth formula
II, wherein subscript n is zero, which is within formula (2) of claim 1; and
coupling the obtained diazonium compound to a pyrimidine compound
within Hildreth formula III, which is within formula member K of claim 1,
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Application 10/502,697
to produce an azo dyestuff compound within Hildreth formula I. Ans. 4-5.
See Hildreth 2:30-42. We agree with the Examiner’s finding that Hildreth
would have further described, in the sole Example, an amino-containing
compound within Hildreth formula II, wherein Z is hydrogen, and within
formula (2) of claim 1, which upon diazotization and coupling with a
pyrimidine compound provides an azo dyestuff compound falling within
Hildreth formula I and formula (1) of claim 1. Ans. 4-5 and 7, citing
Hildreth 3:1-10, 4:1-5, 4:41-45, 5:10-25, and 5:23-24. See also Hildreth
3:50-59, 4:8-13, and 4:30 to 5:9. Hildreth would have disclosed that water-
soluble tertiary ammonium salts of the described azo dyestuffs provide
stable, concentrated aqueous solutions. Hildreth, e.g., 1:35 to 2:20, and
4:14-26.
The Examiner submits that while Hildreth does not suggest adding a
compound of formula (2) of claim 1 to the aqueous dyestuff compositions
disclosed therein, the aqueous compositions would encompass at least
0.05 to 0.1% by weight of such a compound as claimed because Hildreth
does not teach that the diazotization reaction of an amine within Hildreth
formula II goes to 100% completion, thus resulting in a small amount of the
amine starting material of Hildreth formula II remaining in the aqueous
composition. Ans. 5 and 8.
Appellants submit that the Examiner erred in finding that Hildreth
would have described less than full diazotization because in the sole
Example, Hildreth teaches that the amino compound is fully diazotized and
thus, no free amine would be present in the final product. App. Br. 11,
citing Hildreth 4:36-37 and 4:44-45. “While Hildreth teaches a dyestuff
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Application 10/502,697
mixture with at least 70% of dyestuff of formula 1 of claim 1, with the
remaining percentages of the starting material and other reaction products
(page 4, lines 1-10 . . . ), it is quite clear that there is no residual amine . . .
left when the azo dye is formed.” App. Br. 11.
Appellants further submit that the Examiner erred in discounting the
evidence in the Declaration under 37 C.F.R. § 1.132 by Dr. Lautenbach
(Declaration)2 submitted with respect to a prior ground of rejection over
Bermes (US 5,173,086). App. Br. 8-9. Appellants rely on the Declaration to
show that the product of Bermes’ diazotization and coupling of the same
diazo and coupler components “contained no detectable amount of
unreacted” diazo component. App. Br. 9. Appellants contend that even
though “[t]he reaction used in the Declaration reflects example 1 in
Bermes,” the reaction in Hildreth’s example “is similar to that carried out in
Bermes.” App. Br. 9. According to Appellants this evidence “shows that
when the diazotized [amine] is formed, there is no residual [amine] in the
filtrate of the diazotized [amine] . . . or in the wash water filtrate,” pointing
out that “[t]he diazotization step is the only step where residual amine might
contaminate the final coupled azo dye.” App. Br. 10. Appellants submit
that the evidence shows that the “Bermes diazotization results show that no
[amine] remains even without an extra wash of the diazotized product,”
while “Hildreth filters and performs no subsequent wash of the diazotized
product.” App. Br. 10 (original emphasis deleted).
We cannot subscribe to Appellants’ position. We agree with the

2 The Declaration was executed September 7, 2006, and submitted with the
Amendment filed September 18, 2006.
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Application 10/502,697
Examiner that all of Hildreth must be considered and not merely the working
example. See, e.g., In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he
fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered.”). We find no direction in Hildreth that the
diazotization reaction must be run to completion. Indeed, as the Examiner
points out, Hildreth discloses that concentrated aqueous solutions of
ammonium salts of the azo dyestuffs taught therein contain “5 to 25% . . . of
a tertiary ammonium salt of a dyestuff mixture comprising at least 70% of a
dyestuff of Formula I, and the remaining percentages of starting material and
other reaction products.” Ans. 7, citing Hildreth 4:1-5. In light of this
teaching, we determine that one of ordinary skill in this art would have
reasonably expected Hildreth’s disclosure that the stirring of the
diazotization mixture “to fully diazotize” the amine in the sole Example to
result in the presence of some unreacted amine in the diazotization mixture
due to experimental error. In any event, we find that Hildreth does not
require complete diazotization, and thus, on this record we agree with the
Examiner that one of ordinary skill in this art routinely following Hildreth
would arrive at aqueous compositions which meet the requirement for at
least 0.05% by weight of the amine of formula (2) in claim 1.
We are not persuaded otherwise by Appellants’ submission of the
Declaration as indirect evidence that Hildreth fully diazotized the amine in
the Example. We, like the Examiner, find that Appellants’ comparison of
the synthesis of Bermes and of Hildreth’s Example shows that the reactants
are the same, but the reaction conditions differ in the concentration of the
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Application 10/502,697
sodium nitrite diazotizing agent, the base used, the diazotization
temperature, the manner of purification of the diazotization product, and the
coupling reaction temperature. See App. Br. 9; Ans. 7-8. On this record,
Appellants have not established that such evidence is a reliable indication
that full diazotization was achieved in Hildreth’s Example even in view of
the differences in reaction conditions between the example of Bermes and
that of Hildreth, as the Examiner points out. Ans. 7-8. See, e.g., In re
Blondel, 499 F.2d 1311, 1317 (CCPA 1974) (“Appellants’ brief goes
through a detailed, step-by-step analysis of the evidence in support of the
conclusion to be drawn from the indirect comparison,” establishing that the
indirect evidence provided a reliable indication of the performance of the
closest claimed and prior art compounds). Even if Appellants did show that
the evidence in the Declaration establishes full diazotization in Hildreth’s
example, the same is of insufficient weight to overcome the teachings of
Hildreth as a whole that unreacted starting materials can remain in the azo
dyestuff and still form a stable aqueous composition.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
teachings of Hildreth with Appellants’ countervailing evidence of and
argument for nonobviousness, including the evidence in the Declaration, and
conclude, by a preponderance of the evidence and weight of argument, that
the claimed invention encompassed by appealed claims 1-12 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
II
Appellants submit that the Examiner erred in maintaining the ground
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of rejection over Cooper and Zemsky because unexpected results in forming
stable aqueous solutions have been shown in Specification Example 2 for the
claimed compositions, and argue that the combination of Cooper and
Zemsky does not lead to such unexpected results. App. Br. 14-15. As
Appellants point out, “[t]he Examiner has not addressed this argument at
all.” Reply Br. 2; see Ans. 8-9.
It is well settled that as a procedural matter, “[a]fter evidence or
argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (citing, inter alia, In re Spada, 911 F.2d
705, 707 n.3 (Fed. Cir. 1990)). Indeed, a claimed invention “cannot be held
to have been obvious if competent evidence rebuts the prima facie case of
obviousness,” and thus, failure to consider submitted evidence constitutes
error. In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007).
Accordingly, the Examiner committed reversible error in failing to
consider the evidence of unexpected results adduced by Appellants and,
accordingly, we reverse the ground of rejection of claims 13 and 14 under 35
U.S.C. § 103(a) over Cooper and Zemsky
In summary, we have affirmed the ground of rejection of claims 1-12
and have reversed the ground of rejection of claims 13 and 14.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED-IN-PART

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