Ex Parte Martin et alDownload PDFBoard of Patent Appeals and InterferencesJan 22, 200910433612 (B.P.A.I. Jan. 22, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte FRIEDRICH-GEORG MARTIN, GERHARD NESTLER, and JURGEN SCHRODER __________ Appeal 2008-5535 Application 10/433,612 Technology Center 1600 __________ Decided: January 22, 2009 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and FRANCISCO C. PRATS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a process of preparing higher methacrylates. The Examiner has rejected the claims as being non-enabled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appeal 2008-5535 Application 10/433,612 Claims 1, 2, 4-11, 15, 16, 19, 21-26, and 28-34 are pending and on appeal (App. Br. 2).1 Claim 1, the only independent claim, is representative and reads as follows: Claim 1: A process for preparing higher (meth)acrylates comprising: reacting (meth)acrylic acid and an alcohol in the presence of at least one acidic catalyst and at least one polymerization inhibitor and in the presence of a solvent which forms an azeotropic mixture with water, thereby forming a reaction mixture, distilling off and condensing the azeotropic mixture, and separating the condensate into an aqueous phase and an organic phase, . . . [2] wherein the higher (meth)acrylates prepared contain not more than 0.05% by weight of (meth)acrylic acid. The Examiner cites the following documents as evidence of unpatentability: Olah US 3,766,286 Oct. 16, 1973 Gardner US 3,878,261 Apr. 15, 1975 Matsumura et al. US 4,435,594 Mar. 6, 1984 Dougherty et al. US 5,145,989 Sep. 8, 1992 Esch et al. US 5,187,309 Feb. 16, 1993 Bauer, Jr. et al. US 5,877,345 Mar. 2, 1999 Michael B. Smith and Jerry March, March’s Advanced Organic Chemistry 219 (5th ed. 1992). ENABLEMENT 1 Appeal Brief filed December 21, 2006. 2 The omitted part of the claim recites specific reaction conditions for the claimed process, which are not relevant to the rejection on appeal. 2 Appeal 2008-5535 Application 10/433,612 ISSUE Claims 1, 2, 4-11, 15, 16, 19, 21-26, and 28-34, all of the pending claims, stand rejected under 35 U.S.C. § 112, first paragraph (Ans. 3-10).3 The Examiner states that while the Specification is “enabling for using sulfonic acid, sulfuric acid, phosphoric acid, alkanesulfonic acids (e.g. methanesulfonic acid, trifluoromethanesulfonic acid) and arylsulfonic acids (e.g. benzene- or p-toluene- or dodecylbenzenesulfonic acid or mixtures thereof) or acidic ion exchangers as the acidic catalyst, [it] does not reasonably provide enablement for using any acidic catalysts generally” (id. at 3-4). Applying the oft-cited factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), the Examiner reasons that the claims encompass the use of any acidic catalyst in the claimed reactions, whereas the prior art and the Specification disclose that only certain acids are useful as catalysts in the type of reaction claimed (Ans. 4-5). The Examiner contends that the Specification provides only limited guidance, that the claimed invention resides in an unpredictable art, and that therefore “a person of skill in the art would have to engage in undue experimentation to test which acidic catalyst can be employed to produce the desired claimed compound encompassed in the instant claims, with no assurance of success” (id. at 10). Appellants contend that, as disclosed in the Specification, “the preparation of higher (meth)acrylates by acid-catalyzed esterification of (meth)acrylic acid with corresponding alcohols in the presence of an inhibitor or inhibitor system and, if required, of a solvent, is generally 3 Examiner’s Answer mailed July 20, 2007. 3 Appeal 2008-5535 Application 10/433,612 known” (App. Br. 4). Thus, Appellants argue, the gist of the claimed invention is not the use of any particular acid catalyst, but instead “lies in the timing of addition of various components and the conditions extant during said addition” (id. at 5). Appellants further argue that the “Examiner fails to appreciate that the disclosure is directed to persons skilled in the art,” and that because “the fundamental acid-catalyzed reaction of (meth)acrylic acid and an alcohol to prepare higher (meth)acrylates is generally well-known in the art, it is clear that one skilled in the art could routinely choose applicable acid catalysts beyond those specifically listed in the specification herein” (id. at 5-6). In view of the respective positions advanced by the Examiner and Appellants, the issue with respect to this rejection is whether the Examiner erred in concluding that a person skilled in the art would have to resort to undue experimentation in order to practice the claimed invention using the full scope of acid catalysts encompassed by the claims. FINDINGS OF FACT (“FF”) 1. Claim 1 recites a process of preparing higher (meth)acrylates by reacting (meth)acrylic acid and an alcohol “in the presence of at least one acidic catalyst,” among other things. 2. Regarding the acid catalyst recited in the claimed process, the Specification states the following: Suitable esterification catalysts are the conventional mineral acids and sulfonic acids, preferably sulfuric acid, phosphoric acid, alkanesulfonic acids (e.g. methanesulfonic acid, trifluoromethanesulfonic acid) and arylsulfonic acids (e.g. benzene-, p-toluene- or dodecylbenzenesulfonic acid) or mixtures thereof, but acidic ion exchangers are also possible. 4 Appeal 2008-5535 Application 10/433,612 Sulfuric acid, methanesulfonic acid and p-toluenesulfonic acid and mixtures thereof are particularly preferred. (Spec. 13.) 3. The reaction mixtures in Appellants’ Examples 1, 6, 8, and 9 contain hypophosphorous acid and p-toluenesulfonic acid (Spec. 25 and 27-30), and the reaction mixture in Appellants’ comparative example 4 contains methanesulfonic acid (Spec. 27). 4. The Examiner acknowledges that processes of esterifying acrylic acids in the presence of acid catalysts as recited in claim 1 are generally known in the art, as evidenced by Matsumura (using sulfonic acid cation- exchange resin as catalyst), Dougherty (sulfuric acid), Bauer (sulfuric acid), and Esch (strongly acidic cationic resins) (Ans. 5). 5. As evidence of the unpredictability in the art, the Examiner cites Gardner as disclosing the super acid catalyst SbF5 in combination with CF3SO3H for isomerizing four to twelve carbon paraffins, and March’s as disclosing the use of the super acid FSO3H-SbF6 for forming a carbocation from isobutane, “unlike the claimed process” (id. at 6). 6. As further evidence that the claims encompass acidic compounds that would not function in accordance with the claimed invention, the Examiner cites Olah’s disclosure of a number of super acids used for isomerizing paraffinic and/or alkyl substituted aromatic hydrocarbons (id. at 12). The Examiner reasons that applying the super acids of Olah to the claimed process would yield an “unpredictable and completely different [result] . . . because those super acids had a high likelihood of removing hydrogen ions from either of the reactants, the acrylic acid and the alcohol, 5 Appeal 2008-5535 Application 10/433,612 instead of helping them to form the desired acrylate product, thereby detrimentally affecting the yield of the desired final product” (id. at 13). 7. The Examiner states, and Appellants do not dispute, that the pKa of methanesulfonic acid is -1.9, and the pKa for p-toluenesulfonic acid is -2.8 (id. at 8). Given these facts, the Examiner reasons that [F]rom this information, it follows that the optimum workable pKa range for the claimed process is from -1.9 to -2.8. However, this can not be the representatives for all the pKa range of the acidic catalysts outside the workable pKa range of the claimed invention, which would work for the claimed process. Thus, the specification fails to provide working examples as to how other types of acidic catalysts can be resulted in the claimed products, i.e. again, there is no correlation between the functional language of any acidic catalyst and the desired final product. (Id. at 8-9.) 8. The Examiner finds that a skilled artisan in the field of the claimed invention “would know how to use the taught acid catalyst, but not how to select other catalyst without trial and error” (id. at 9). PRINCIPLES OF LAW The Examiner bears the burden of establishing that practicing the full scope of the claimed subject matter would have required undue experimentation. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (“[T]he PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application.”). “The scope of enablement . . . is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill 6 Appeal 2008-5535 Application 10/433,612 in the art without undue experimentation.” National Recovery Technols., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed Cir. 1999). While the Specification must enable the skilled artisan to practice the full scope of the claimed subject matter, “[i]t is well settled that patent applicants are not required to disclose every species encompassed by their claims, even in an unpredictable art.” In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991). Moreover, a claim does not lack enablement merely because it encompasses inoperative embodiments. Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). For example, in In re Angstadt, 537 F.2d 498 (CCPA 1976), our reviewing court’s predecessor explicitly recognized that the relevant art was unpredictable, and that the claim at issue encompassed a number of inoperative embodiments. Id. at 502. The court nonetheless held that the claim, which encompassed using thousands of different catalysts, was enabled, in view of the specification’s disclosure of a large but finite list, and 40 working examples. See id. at 502-503. Thus, as our current reviewing court has noted: [T]here must be sufficient disclosure, either through illustrative examples or terminology, to teach those of ordinary skill how to make and how to use the invention as broadly as it is claimed. This means that the disclosure must adequately guide the art worker to determine, without undue experimentation, which species among all those encompassed by the claimed genus possess the disclosed utility. Vaeck, 947 F.2d at 496 (footnote omitted). ANALYSIS We acknowledge the Examiner’s explicit findings in accordance with the Wands factors. However, we do not agree that the facts presented 7 Appeal 2008-5535 Application 10/433,612 support the Examiner’s conclusion of non-enablement. Rather, we agree with Appellants that the Examiner erred in concluding that a person skilled in the art would have to resort to undue experimentation in order to practice the claimed invention using the full scope of acid catalysts encompassed. In the instant case, as the Examiner concedes, the Specification provides a number of different types of acid catalysts suitable in the claimed esterification reaction (FF 2, 3), and the prior art acknowledges that the named compounds function as catalysts in the type of reaction claimed (FF 4). In our view, however, the Specification’s disclosure of a variety of different art-recognized acid catalysts as suitable in the claimed reactions undermines, rather than supports, the Examiner’s contention that the Specification provides insufficient guidance to practice the full scope of the claims. That is, because the Specification and the prior art apprised a skilled artisan of the types of compounds useful in the claimed process, the artisan was informed of the suitable structural and functional properties of compounds useful as acid catalysts. Moreover, as the Examiner concedes, because of the art-recognized functional properties of the catalysts, i.e. the pKa values of the exemplified compounds (see FF 7), the Specification advised one skilled in the art of suitable pKa ranges for potential catalysts. Thus, contrary to the Examiner’s position, the Specification as filed provided the art-informed skilled artisan with structural and functional guidance regarding compounds that would be suitable as acid catalysts. Because of that guidance, we do not agree with the Examiner that the skilled artisan seeking to ascertain suitable acid catalysts for the claimed process would have needed to experiment unduly. 8 Appeal 2008-5535 Application 10/433,612 As noted above, the Examiner argues that the claims encompass a number of acid catalysts, including super acids, that would not be expected to function in the claimed process to yield the claimed product (FF 5, 6). However, even assuming for argument’s sake that the asserted super acids would not work in accordance with the claimed process, a claim does not lack enablement merely because it encompasses inoperative embodiments. See Atlas Powder, 750 F.2d at 1576. Thus, even in the relatively unpredictable chemical arts, claims encompassing numerous species, including inoperative ones, will be enabled if supported by sufficient guiding disclosure. See Angstadt, 537 F.2d at 502- 503. In the instant case, as discussed above, the Specification and prior art provide substantial guidance as to the identities and properties of compounds suitable as acid catalysts in the claimed process. The Examiner’s ability to provide examples of acids that might not function in accordance with the claimed invention therefore does not persuade us that the claims are not enabled. In sum, we agree with Appellants that the Examiner erred in concluding that a person skilled in the art would have to resort to undue experimentation in order to practice the full scope of the claimed invention. We therefore reverse the Examiner’s rejection of claims 1, 2, 4-11, 15, 16, 19, 21-26, and 28-34 35 U.S.C. § 112, first paragraph. REVERSED 9 Appeal 2008-5535 Application 10/433,612 cdc OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C. 1940 DUKE STREET ALEXANDRIA VA 22314 10 Copy with citationCopy as parenthetical citation