Ex Parte Murdoch

Board of Patent Appeals and Interferences

Sep 25, 2003

09651161 (B.P.A.I. Sep. 25, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM MURDOCH
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Appeal No. 2003-1674
Application No. 09/651,161
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ON BRIEF
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Before OWENS, LIEBERMAN and MOORE, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 14, which are all the claims pending in this application.

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THE INVENTION
The invention is directed to a process for recycling polyethylene terephthalate by
treatment with ammonium hydroxide to form ammonium terephthalate. The ammonium
terephthalate is heated to form terephthalic acid (TPA) and ammonia. Additional
limitations are described in the following illustrative claim.

THE CLAIM
Claim 1 is illustrative of appellant’s invention and is reproduced below.
1. A process for recycling polyethylene terephthalate to form reactants useful in
the manufacture thereof comprising:
(a) contacting recyclable polyethylene terephthalate with ammonium hydroxide to
form a mixture of ammonium terephthalate and ethylene glycol;
(b) separating said ammonium terephthalate from the mixture; and
(c) heating said ammonium terephthalate to form TPA and ammonia.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Ventura et al. (Ventura) 3,624,049 Nov. 30, 1971
Sze et al (Sze) 3,968,152 July 6, 1976
Lamparter et al (Lamparter) 4,542,239 Sep. 17, 1985

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THE REJECTION

Claims 1 through 14 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Lamparter in view of Sze and further in view of Ventura.

OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner and agree with the appellant that the rejection of the claims under § 103(a)
is not well founded. Accordingly, we reverse this rejection.
The Rejection under § 103(a)
The primary reference to Lamparter is directed to a method for recycling
polyethylene terephthalate. There is no dispute that Lamparter discloses steps (a) and (b)
of the claimed subject matter wherein polyethylene terephthalate is contacted with
ammonium hydroxide to form a mixture of ammonium terephthalate and ethylene glycol
wherein the ammonium terephthalate is thereafter separated from the mixture. The
claimed subject matter thereafter requires heating the ammonium terephthalate to form
TPA and ammonia. See step (c), of claim 1. In contrast, Lamparter acidifies the
ammonium terephthalate with a mineral acid such as sulfuric acid to form TPA and an
ammonium salt, such as ammonium sulfate. Thus, Lamparter fails to disclose or teach step
(c) of claim 1.
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The examiner thereafter relies upon Sze purportedly to teach heating of ammonium
terephthalate to form TPA and ammonia and provide the requisite motivation to substitute
that step for the one present in Lamparter. Based upon these considerations, it is the
examiner’s position that, “Sze’s teaching is directed toward the recovery of TPA from its
diammonium salt and thus provides the motivation for the instant use of steam to release
TPA from its diammonium salt.” See Answer, pages 5-6. We disagree.
Sze is directed to a single step process for the production of an acid such as TPA by
hydrolysis of its corresponding nitrile. See column 1, lines 49-53. Although the examiner
points to numerous teachings in Sze as providing basis for the recovery of TPA from its
diammonium salt, we conclude that none of the citations are directed to the recovery of
TPA from its diammonium salt. In this respect, column 4, lines 31-36 of Sze, cited by the
examiner Answer, page 4, makes no mention of an ammonium salt of terephthalic acid.
Furthermore, the exemplification of conversion of terephthalonitrile, (TPN) to TPA at
column 3, line 51 to column 4, liner 12, Example 1, cited by the examiner, Answer, page
8, converts TPN to TPA, likewise fails to suggest or teach the hydrolysis of ammonium
terephthalate to TPA. Although ammonium terephthalate is present throughout the
reaction, it remains completely unchanged in the amount present from the onset of the
reaction to its completion. Stated otherwise 20.3 parts of ammonium terephthalate are
present at the onset of the reaction and the same amount is recovered at the completion of
the reaction.
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Finally, although the mechanism outlined by the examiner for the hydrolysis of TPN
to TPA, which contains the hydrolysis of the ammonium terephthalate intermediate to
TPA, is agreed to by the appellant, it is not seen wherein said mechanism provides the
requisite motivation to substitute the hydrolysis of ammonium terephthalate to TPA for the
acidification step taught by Lamparter of record.
We conclude that the only reason for combining the references of record is a result
of the disclosure of the invention by the appellant. Based upon the above finding and
analysis, we conclude that the examiner has not established a prima facie case of
obviousness with respect to the aforesaid set of claims. See In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best defense against the
subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous
application of the requirement for a showing of the teaching or motivation to combine
prior art references").
The reference to Ventura is directed exclusively to the polymerization of
polyethylene terephthalate and accordingly is not relevant to the issue before us for
consideration.
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DECISION
The rejection of claims 1 through 14 under 35 U.S.C. §103(a) as being
unpatentable over Lamparter in view of Sze and further in view of Ventura is reversed.
The decision of the examiner is reversed.

REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
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)
)
JAMES T. MOORE )
Administrative Patent Judge )
PL/dal
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Susan F Johnson
Law Office of Mark L Davis
P O Box 9293
Gray , TN 37615-9293