Ex Parte Maas et al

Patent Trial and Appeal Board

Sep 7, 2016

12279792 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/279,792 08/18/2008
123223 7590 09/09/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Steffen Maas
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
074008-0743-US 4675
EXAMINER
WITHERSPOON, SIKARL A
ART UNIT PAPER NUMBER
1671
NOTIFICATION DATE DELIVERY MODE
09/09/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFFEN MAAS, THORSTEN JOHANN, MICHAEL KOCH,
TILMAN SIRCH, STEPHAN SCHLITTER, STEP AN RITTINGER, and
MICHAEL STEINIGER 1
Appeal2014-002986
Application 12/279,792
Technology Center 1600
Before ERIC B. GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for hydrogenating a methylolalkanal, which have been rejected for
obviousness and obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse the obviousness rejection but affirm the double patenting
rejection.
1 Appellants identify the Real Party in Interest as BASF SE. (Br. 1.)
Appeal2014-002986
Application 12/279,792
STATEMENT OF THE CASE
"The catalytic hydrogenation of carbonyl compounds, for example
aldehydes, to prepare simple and functionalized alcohols is assuming an
important position in the production streams of the commodity chemicals
industry." (Spec. 1:9-11.) "[T]o prepare polyhydric alcohols such as
pentaerythritol, neopentyl glycol or trimethylolpropane from aqueous
methylolalkanal solutions, these solutions have to be hydrogenated." (Id. at
1:24--26.)
Claims 11-20 are on appeal. Claim 11 is the only independent claim
and reads as follows (emphasis added):
11. A process for catalytically hydrogenating a methylolalkanal of
general formula (I)
wherein
R1 and R2 are each independently a methylol group, an alkyl group having
up to 22 carbon atoms, an aryl group having from 6 to 33 carbon atoms, or
an aralkyl group having from 6 to 33 carbon atoms, and
said process comprises a hydrogenation feed and a hydrogenation effluent,
comprising hydrogenating said methylolalkanal of general formula (I) in the
liquid phase over a hydrogenation catalyst,
measuring the pH of said hydrogenation effluent, and
subsequently adding an amount of at least one tertiary amine, inorganic
base, inorganic acid, or organic acid to said hydrogenation feed so as to
maintain a pH in the range of from 7. 0 to 9. 0 in said hydrogenation effluent.
2
Appeal2014-002986
Application 12/279,792
I
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Wartini. 2 (Nonfinal Action3 2.) The Examiner
finds that Wartini teaches a process of hydrogenating a methylolalkanal
comprising measuring pH by known methods and setting the pH of the
hydrogenation feed to 6.3 to 7.8 by adding a tertiary amine. (Id.) The
Examiner acknowledges that Wartini does not teach measuring the pH of the
hydrogenation effluent, but concludes that this is not a patentable distinction:
Wartini et al clearly teaches a pH of the hydrogenation feed that
overlaps the pH range of the instant claims. In the present
invention, the pH is maintained by adding an acid or base to the
hydrogenation feed. This is exactly where the pH in Wartini et
al is maintained.
(Id. at 3.)
Appellants argue that Wartini does not suggest all the steps of claim
11 because "[t]he pH of the hydrogenation effluent of Wartini is not
measured, nor is any amount of at least one tertiary amine, [etc.] ... added
to the hydrogenation feed as a response to this measurement in order to
maintain the pH of the hydrogenation effluent in the range of from 7.0 to
9.0." (Br. 8.) Appellants argue that Wartini's "teaching to measure the pH
of the hydrogenation feed cannot be said to reasonably suggest to one of
ordinary skill in the art to measure the pH at the hydrogenation effluent, as
presently claimed." (Id. at 9.)
2 Wartini et al., US 2006/0205985 Al, Sept. 14, 2006.
3 Office Action mailed March 11, 2013.
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Appeal2014-002986
Application 12/279,792
We agree with Appellants that the Examiner has not shown that the
steps of measuring the pH of the hydrogenation effluent and subsequently
adjusting the pH of the hydrogenation feed to between 7.0 and 9.0 would
have been obvious based on Wartini. The present application states that "the
pH in the hydrogenation reactor has a crucial influence on the hydrogenation
result and the catalyst activity." (Spec. 2:22-23.) The Specification also
states that
[t]he pH in the reactor therefore corresponds to the pH of the
hydrogenation effluent, but is significantly higher than the pH of
the hydrogenation feed. The difference in the pH between feed
and effluent is determined by the activity of the catalyst with
regard to the decomposition of formic acid, and also by
temperature, amount of off gas and loading.
(Id. at 2:38 to 3:2.)
Thus, the Specification that "[ t ]he process according to the invention
enables effective pH control in the reactor by setting the inventive pH range
in the hydrogenation effluent." (Id. at 4:1-2.)
Wartini teaches the same reaction as recited in claim 11, and teaches
maintaining the pH of the hydrogenation feed between 6.3 and 7.8. (Wartini
i-f 8.) However, Wartini does not suggest that the pH within the reaction
chamber, and therefore the pH of the hydrogenation effluent, will differ from
the pH of the hydrogenation feed. Thus, Wartini does not provide a reason
to measure the pH of the hydrogenation effluent and subsequently adjust the
pH of the hydrogenation feed. We therefore reverse the rejection under 35
U.S.C. § 103(a).
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Appeal2014-002986
Application 12/279,792
II
The Examiner has rejected claims 11-14 and 16-20 for obviousness-
type double patenting based on claims 1-9 of U.S. Patent 7,439,406. (Non-
final Action 4.)
Appellants present no arguments directed to the double patenting
rejection in this appeal. Therefore, we affirm the rejection. See Hyatt v.
Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to
contest a ground of rejection to the Board, ... the Board may treat any
argument with respect to that ground of rejection as waived. In the event of
such a waiver, the PTO may affirm the rejection of the group of claims that
the examiner rejected on that ground without considering the merits of those
rejections.").
SUMMARY
We reverse the rejection of claims 11-20 under 35 U.S.C. § 103(a).
We affirm the rejection of claims 11-14 and 16-20 for obviousness-
type double patenting.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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