Ex Parte Maas et al

Board of Patent Appeals and Interferences

Sep 21, 2011

12279792 (B.P.A.I. Sep. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/279,792 08/18/2008 Steffen Maas 12810-00743-US 4675
23416 7590 09/21/2011
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
WITHERSPOON, SIKARL A
ART UNIT PAPER NUMBER
1621
MAIL DATE DELIVERY MODE
09/21/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEFFEN MAAS, THORSTEN JOHANN, MICHAEL KOCH,
TILMAN SIRCH, STEPHAN SCHLITTER, STEFAN RITTINGER, and
MICHAEL STEINIGER
__________

Appeal 2011-007353
Application 12/279,792
Technology Center 1600
__________

Before ERIC 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
hydrogenation process. The Examiner has rejected the claims as anticipated
and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “a process for catalytically hydrogenating
methylolalkanals in the liquid phase over a hydrogenation catalyst by pH
Appeal 2011-007353
Application 12/279,792

2
control of the hydrogenation effluent” (Spec. 1: 5-7). The Specification
discloses that “the hydrogenation reactor is operated … with a high
circulation ratio, i.e. the amount circulated is selected to be greater than the
amount of fresh feed.... The pH in the reactor therefore corresponds to the
pH of the hydrogenation effluent.” (Id. at col. 2, ll. 35-39.)
Claims 11-20 are on appeal. Claim 11 is representative and reads as
follows:
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, and
maintaining a pH in the range of from 7.0 to 9.0 in said hydrogenation
effluent by adding at least one tertiary amine, inorganic base, inorganic acid,
or organic acid to said hydrogenation feed.

The Examiner has rejected claims 11-14 and 16-20 under 35 U.S.C.
§ 102(b) as being anticipated by Wartini.1 Claims 12-14 and 16-20 have not

1 Wartini et al., WO 2004/092097 A1, Oct. 28, 2004. The Examiner cites to
Wartini et al., U.S. 2006/0205985 A1, Sept. 14, 2006, as an English-
Appeal 2011-007353
Application 12/279,792

3
been argued separately and therefore stand or fall with claim 11. 37 C.F.R.
§ 41.37(c)(1)(vii). The Examiner has also rejected claim 15 under 35 U.S.C.
§ 103(a) as being obvious in view of Wartini. Since Appellants have waived
any separate argument for the rejection of claim 15 (Appeal Br. 8), we will
consider the rejections together.
The Examiner finds that Wartini discloses “a process for hydrogen-
ating methylolalkanals over a hydrogenation catalyst, wherein the pH of the
hydrogenation feed is set to … 6.3 to 7.8 by the addition of a tertiary amine”
(Answer 4). The Examiner finds that Wartini “specifically discloses a
process for preparing neopentyl glycol by the hydrogenation of hydroxy-
pivaldehyde; the hydrogenation feed contains less than 5% by weight of
formaldehyde, and is hydrogenated in the presence of a supported copper
catalyst.… This process anticipates the instant claims.” (Id.)
Appellants contend that Wartini does not anticipate claim 11 because
Wartini discloses catalytically hydrogenating methylolalkanals “wherein the
pH of the hydrogenation feed is set to … 6.3 to 7.8.… Wartini is silent as to
the pH of the hydrogenation effluent produced in the course of its process
and, thus, does not explicitly disclose the feature ‘…maintaining a pH in the
range of from 7.0 to 9.0 in said hydrogenation effluent.’” (Appeal Br. 3.)
Appellants also contend that this limitation is also not inherent in Wartini’s
process (id. at 4).

language equivalent of the WO reference (Answer 3). Appellants do not
dispute that the disclosures of the two Wartini references are equivalent (see
Appeal Br. 3).
Appeal 2011-007353
Application 12/279,792

4
The issue presented is: Does the evidence of record support the
Examiner’s finding that Wartini discloses the claimed process, including
adjusting the hydrogenation feed to maintain a pH of 7.0 to 9.0 in the
hydrogenation effluent?
Findings of Fact
1. Wartini discloses “a process for the catalytic hydrogenation of
methylol-alkanals in the liquid phase over a hydrogenation catalyst at a pH
of the hydrogenation feed which has been set to from 6.3 to 7.8 by addition
of tertiary amine” (Wartini 1, ¶ 0001).
2. Wartini exemplifies the hydrogenation of hydroxypivalaldehyde to
neopentyl glycol using Catalyst G (id. at 2, ¶¶ 0024-0028).
3. Wartini discloses that the pH of the feed was adjusted to 5.3, 7.4,
or 8.3 by the addition of trimethylamine (id. at 2, ¶¶ 0026, 0028).
4. Wartini discloses that the hydrogenation feed “was brought to the
pH indicated … and was pumped over the catalyst in a hydrogenation
reactor with circulation of liquid (recycle:feed=10:1)” (id. at 2, ¶ 0026).
5. Appellants have provided a declaration under 37 C.F.R. § 1.132
(Declaration of Maria Guixa-Guardia, filed Feb. 19, 2010).
6. Dr. Guixa-Guardia declares that an experiment was conducted in
which hydroxypivalinaldehyde was hydrogenated to neopentylglycol in the
presence of a catalyst (Guixa-Guardia Declaration, ¶ 5).
7. Dr. Guixa-Guardia declares that run 2 was longer than run 1 and
that the results of the runs were as follows: for run 1, the pH of the feed was
7.9 and the pH of the effluent was 8.8; for run 2, the pH of the feed was 7.7
and the pH of the effluent was 6.8 (id.).
Appeal 2011-007353
Application 12/279,792

5
8. Dr. Guixa-Guardia declares that the comparison of run 1 and run 2
shows that “the pH value of the hydrogenation effluent decreased as the age
of the catalyst increased” (id. at ¶ 7).
9. Dr. Guixa-Guardia declares that an experiment was conducted in
which dimethylolbutanal was hydrogenated to trimethylolpropane (id. at ¶
6).
10. Dr. Guixa-Guardia declares that the results of the experiment are
shown in Table 2, which is reproduced below:

(Id.)
11. Dr. Guixa-Guardia declares that “the data in Table 2 demonstrates
a decrease in the pH of the hydrogenation effluent as the age of the catalyst
increases even though the pH of the hydrogenation feed is kept relatively
constant” (id. at ¶ 7).
Principles of Law
[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
Appeal 2011-007353
Application 12/279,792

6
subject matter shown to be in the prior art does not possess the
characteristic relied on.
In re Best, 562 F.2d 1252, 1254 (CCPA 1977).
Analysis
Claim 11 is directed to a process for catalytically hydrogenating a
methylolalkanal in which the hydrogenation effluent is maintained at a pH of
7.0 to 9.0 by adding, e.g., a tertiary amine to the hydrogenation feed.
We agree with the Examiner that Wartini anticipates claim 11.
Wartini discloses a process for catalytically hydrogenating hydroxy-
pivalaldehyde to neopentyl glycol, with the feed adjusted to a pH of 5.3, 7.4,
or 8.3. Since the pH of the feed at 7.4 and 8.3 is within the claimed effluent
pH range of 7 to 9, the Examiner concluded that the pH of the effluent in
these reactions were likely to be within the claimed range. We agree. The
Examiner’s reasoning is supported by the Guixa-Guardia Declaration, which
discloses that when a reaction similar to Wartini’s was conducted with a
feed pH of 7.9, the pH of the effluent was 8.8 (FF 7). It is reasonable to
expect, therefore, that Wartini’s hydrogenation reaction with a feed pH of
7.4 would be in the range of 7.0 to 9.0.
Appellants argue that the “Examiner has not met his burden in
establishing that claim 11 is prima facie anticipated by Wartini on the basis
that the feature “... maintaining a pH in the range of from 7.0 to 9.0 in the
hydrogenation effluent ...” required by claim 11 is inherently disclosed in
this reference” (Appeal Br. 4). Appellants argue that the Examiner has not
provided a basis in fact or technical reasoning to support an inherency
rationale (id.).
Appeal 2011-007353
Application 12/279,792

7
This argument is not persuasive. When the Examiner has provided a
reasonable basis for concluding that the claimed process is the same as a
prior art process, the burden shifts to Appellants to prove that the prior art
process does not necessarily or inherently possess the characteristics of the
claimed process. See Best, 562 F.2d at 1254. This principle is particularly
applicable here where the Wartini reference and the instant application share
a common inventor and are commonly assigned. Thus, Appellants are
uniquely situated to provide evidence on whether the effluent pH for
Wartini’s Example 1 is outside the range required by the instant claims.
Appellants have not provided evidence that the reactions conducted by
Wartini result in hydrogenation effluents having a pH outside the range of
7.0 to 9.0.
Appellants argue that the Specification “teaches that the pH of the
hydrogenation effluent can differ from the pH of the hydrogenation feed”
(Appeal Br. 5). Appellants also argue that “side reactions, such as the
formation of hydroxypivalic acid (HPA) … can influence the pH in the
hydrogenation reactor.… Furthermore, catalyst age … influences the pH in
the hydrogenation reactor.” (Id. at 5-6.) Appellants argue that the Guixa-
Guardia Declaration “demonstrates the variability of the hydrogenation
effluent pH as a function of the age of the catalyst” (id. at 6). Appellants
also argue that Wartini does not disclose the age of the catalyst used in the
Examples (id. at 7). Appellants conclude that “it is entirely possible based
on the evidence provided in the Declaration that the effluent pH of Examples
1 and C2 of Wartini is outside the claimed range” (id. at 7-8).
Appeal 2011-007353
Application 12/279,792

8
These arguments are not persuasive. Although Table 2 of the Guixa-
Guardia Declaration shows that hydrogenation effluent pH changes over
time, the relevant time period is measured in thousands of hours (see FF 10).
Further, claim 11 does not require the pH of the effluent to be maintained in
the claimed range for the entire hydrogenation reaction, only that it is
“maintained.” Given its broadest reasonable interpretation, the claim
language only requires maintaining the pH for some period of time. In view
of the slow rate of change in hydrogenation effluent pH over time (see
FF 10), those of skill in the art would reasonably expect that the pH in the
effluent of Wartini’s Example was “maintained” in the claimed range of 7.0
to 9.0 for at least some period of time.
In addition, Wartini provides no basis for concluding that the catalyst
used in its Example 1 was not freshly prepared. As discussed above, if the
catalyst used in Wartini’s Example 1 was aged or had other properties that
would lead the reaction to produce a hydrogenation effluent with a pH
outside the range of 7.0 to 9.0, Appellants are in the best position to provide
evidence to that effect.
Conclusion of Law
The evidence of record supports the Examiner’s finding that Wartini
discloses the claimed process, including adjusting the hydrogenation feed to
maintain a pH of 7.0 to 9.0 in the hydrogenation effluent.
SUMMARY
We affirm the rejection of claims 11-14 and 16-20 under 35 U.S.C.
§ 102(b) and the rejection of claim 15 under 35 U.S.C. § 103(a).
Appeal 2011-007353
Application 12/279,792

9
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

lp