Ex Parte Narita et al

Patent Trial and Appeal Board

Sep 6, 2016

11614587 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111614,587 12/21/2006
826 7590 09/08/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Mitsuo Narita
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.
035576.321346 9618
EXAMINER
WHITE, EVERETT
ART UNIT PAPER NUMBER
1672
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUO NARIT A, MASAKI T ABAT A, ATSUSHI YOSHIDA,
and HIROSHI UMEZAWA 1
Appeal2015-000603
Application 11/614,587
Technology Center 1600
Before JEFFREYN. FREDMAN, RICHARD J. SMITH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of preparing cellulose ether, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Methods for preparing cellulose ether from pulp that involve first
preparing an alkali cellulose by reacting the pulp with an alkali solution then
subsequently reacting the alkali cellulose with an etherifying agent are
1 Appellants identify the Real Party in Interest as Shin-Etsu Chemical Co.,
Ltd. (Appeal Br. 1.)
Appeal2015-000603
Application 11/614,587
known. (Spec. 1--4.) According to the Specification, some of the prior art
processes result in water insoluble portions of cellulose ether caused by
uneven alkali distribution in the alkali cellulose, which results in a portion of
the cellulose ether having a low degree of substitution. (Id.) In other prior
art processes, where alkali distribution is not problematic, "the method needs
huge equipment and many operations .... [and] reaction efficiency of the
etherifying agent is reduced" because at least some of the hydrophilic
solvent used to remove the alkali in a washing step "remains in the alkali
cellulose and causes a side reaction with an etherifying agent." (Spec. 4.)
Moreover, according to the Specification, in that process "[ n ]eutralization of
the washing liquid or recovery of the alkali is required [and] [ t ]hus, this
method is industrially difficult." (Id.) Appellants' invention is directed to a
method "for efficiently preparing alkali cellulose having a uniform alkali
distribution." (Spec. 5.)
Claims 5-8 and 10-13 are on appeal. Claims 5 and 6 are
representative and reads as follows:
5. A method for preparing cellulose ether, comprising the
steps of:
bringing pulp into continuous contact with an alkali
metal hydroxide solution in a bucket conveyor type contactor to
generate a contact mixture;
draining the contact mixture; and
etherifying the alkali cellulose prepared in the draining
step with an etherifying agent to produce cellulose ether.
6. The method for preparing cellulose ether according to
Claim 5, wherein a weight ratio of the alkali metal hydroxide
contained by a cake obtained in the draining step to a solid
portion contained by the pulp is 0.3 to 1.5.
2
Appeal2015-000603
Application 11/614,587
(Appeal Br. 27.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 5-8 and 10-13 under 35 U.S.C. § 103(a) as unpatentable over
Wust2 and Lindahl.3
Claims 5-8 and 10-13 on the ground of non-statutory obviousness-
type double patenting over claims 5-8 and 10-12 of copending Application
No. 11/615,367 in view of Lindahl.
DISCUSSION
Claim 5
The Examiner finds that Wust discloses a method of refining cellulose
with alkali for the "continuous production of alkyl cellulose as recited in the
instant claims." (Ans. 6 (emphasis in the original).) In particular, the
Examiner notes that Wust
discloses a method for the continuous production of alkyl
cellulose by treating alkali cellulose with alkylating agents in the
presence of inert liquids wherein powdered cellulose is reacted
with aqueous alcoholic alkali metal hydroxide solution to form
alkali cellulose and the reaction mixture is reacted with at least a
stoichiometric amount, based on the alkali metal hydroxide, of
an alkylating agent in an inert liquid, the reaction being carried
out continuously in stirred tanks-in-series with 2 to 10 units (see
abstract).
2 Wust et al., US 4,339,574, issued July 13, 1982.
3 Lindahl et al., US 4,244,778, issued Jan. 13, 1981.
3
Appeal2015-000603
Application 11/614,587
(Ans. 5; Final Action 5.) The Examiner notes that Wust differs from the
claimed invention in that it does not disclose preparation of products "in a
bucket conveyor type cont[]actor". (Ans. 5; Final Action 6.) The Examiner
recognizes that the "cellulose powder being conveyed via a conveyor-type
apparatus wherein methanolic sodium hydroxide is metered downstream and
alkali cellulose is formed in a few seconds." (Ans. 6.)
The Examiner finds that Lindahl discloses a cellulose pulp refining
method that includes "bleaching and/or treating [the pulp] with alkali," such
as "alkali metal hydroxide or sodium hydroxide," where the process uses a
screw conveyor to move the pulp "through a zone in a continuous flow" and
then drying the refined pulp. (Ans. 5 and 7.) The Examiner contends that
drying meets the "draining" limitation. (Ans. 5.) The Examiner also finds
that Lindahl discloses that "any continuous or batch flow reaction zone
apparatus can be used" and it specifically identifies both "a train of buckets"
instead of screw conveyors as an option. (Ans. 5 and 7.)
The Examiner contends that "it would have been obvious to one of
ordinary skill in the art at the time the invention was made to substitute the
conveyor-type apparatus used in the preparation of alkyl cellulose of[] Wust
[] with a screw conveyor or 'a train of buckets' in view of the recognition in
the art, as evidenced by Lindahl[], that such an apparatus would be effective
in refining cellulose with alkali." (Ans. 6.)
We agree with the Examiner's factual findings and conclusion that it
would have been obvious to substitute the train-of-buckets of Lindahl into
Wust on the downstream side of the metering pump before the vacuum
vessel where refining cellulose with alkali takes place.
4
Appeal2015-000603
Application 11/614,587
Appellants' argument that the rejection is in error because the
Examiner has not provided sufficient explanation as to why one would
replace piping in Wust with a train-of-buckets described in Lindahl (Reply
Br. 6) is unavailing. Lindahl clearly teaches that screw conveyors and a
train-of-buckets are means by which cellulose that is to be refined with
chemicals such as alkali metal hydroxide can be conveyed through a refining
process, as is any continuous process. (See, e.g., Lindahl 15:30-37, 17:23-
36, 1 :58---62, 3:8-13.) "Simple substitution of one known element for
another" is obvious. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398. 416-17
(2007) (noting that "a 'patent for a combination which only unites old
elements with no change in their respective functions ... obviously
withdraws what already is known into the field of its monopoly and
diminishes the resources available to skillful men.' Great Atlantic & Pacific
Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152-153 (1950),"
and "when a patent 'simply arranges old elements with each performing the
same function it had been known to perform' and yields no more than one
would expect from such an arrangement, the combination is obvious.
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)"). The Examiner
provided the requisite articulated reasoning having a rational underpinning
to support the conclusion of obviousness of the "actual contemplated
modification" (Reply Br. 6).
Further, the fact that a "combination would not be made by
businessmen for economic reasons [(Reply Br. 7)] does not mean that
persons [of ordinary skill] in the art would not make the combination
because of some technological incompatibility." In re Farrenkopf, 713 F.2d
5
Appeal2015-000603
Application 11/614,587
714, 718 (Fed. Cir. 1983). Only technological incompatibility is relevant.
Id.
Appellants argue that Lindahl' s use of a screw conveyor is in a
process that is "drastically different than the process the cited piping is used
for in Wust" (Reply Br. 7) and "the use of sodium hydroxide [is] for a
different purpose than that claimed" (Reply Br. 8), but those arguments do
not establish technological incompatibility. That there are differences in the
refining processes of Lindahl and Wust does not establish that known means
of conveyance of pulp material combined with alkali metal hydroxide are
not interchangeable. Appellants admit that in Lindahl the pulp is conveyed
to "a first stage 8," and the conveyance is disclosed to be by the use of a
screw conveyor (or an equivalent train-of-buckets), and the pulp is mixed
during that conveyance with sodium hydroxide, among other things. (Reply
Br. 7-8.) Consequently, differences in the refinement process do not negate
the equivalency position the Examiner made with respect to conveying
cellulose pulp mixed with alkali metal hydroxide.
Likewise, the fact that Lindahl mixes pulp with sodium hydroxide to
remove alkali-hydrolyzable substances rather than to create alkali-cellulose
does not show technological incompatibility of the use of a train-of-buckets
to convey the pulp that is being treated with sodium hydroxide over a
continuous conveyance method disclosed in Wust. Thus, this argument also
does not negate the equivalency position the Examiner made with respect to
conveying cellulose pulp mixed with alkali metal hydroxide.
We also disagree with Appellants' argument that the prior art teaches
away from the substitution because Wust teaches "an object of this invention
6
Appeal2015-000603
Application 11/614,587
[is] to provide an improved method for the continuous production of alkyl
cellulose" and Lindahl teaches the use of a train of buckets or screw
conveyor is for use in a batch or semibatch process (Appeal Br. 24). "The
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed." In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have not shown
that a train-of-buckets for conveying cellulose treated with alkali metal
hydroxide as taught by Lindahl would not work successfully in the alkali
cellulose refinement process of Wust. To the extent that Appellants contend
that a semibatch process using a train-of-buckets would not work as well as
a continuous process, we note that "just because better alternatives exist in
the prior art does not mean that an inferior combination is inapt for
obviousness purposes." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012). Simple substitution of a known structure that achieves the expected
results at issue here is merely "the work of the skillful mechanic, not that of
the inventor." Sakraida, 425 U.S. at 279, 282. Thus, for the reasons
discussed, Appellants do not persuade us that the Examiner erred in rejection
claim 5 for obviousness over Wust and Lindahl.
Claims 10-13, which depend directly from claim 5, have not been
argued separately and therefore fall with claim 5. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 6
Regarding claim 6, the Examiner finds that Wust "discloses the molar
ratio of sodium hydroxide to anhydroglucose between 1.5 and 5" and that
7
Appeal2015-000603
Application 11/614,587
"[t]his teaching of the Wust [] embraces the weight ratio of the alkali metal
hydroxide contained by a cake to the solid portion contained by the pulp at
0.3 to 1.5" as claimed. (Ans. 7; Final Action 5.) We disagree with the
Examiner's factual finding and conclusion of obviousness.
As Appellants note "Wust does not teach a step of obtaining cake
from draining alkali cellulose prior to etherification." (Appeal Br. 17.)
Indeed "Wust does not drain alkali cellulose once prepared, but rather,
keeps the alkali cellulose in inert liquid to then pump the composition to the
reaction system for etherification." (Appeal Br. 16-17; see e.g., Wust 3:34--
60 (noting that a suspension of cellulose powder is made by mixing it with
toluene and that suspension is mixed with an aqueous/methanolic sodium
hydroxide to generate alkali cellules which is degassed and dehydrate but
remains as an alkali-cellulose toluene suspension that is pumped into a
reaction system to which methyl chloride and ethylene oxide is added).)
Thus, we agree with Appellants that Wust does not teach obtaining a cake
and its disclosure of the molar ratio of sodium hydroxide to anhydroglucose
is in regard to "the 'charge' or starting materials, not the resulting alkali
cellulose" (Appeal Br. 17), much less a cake of alkali cellulose.
We further agree with Appellants that Lindahl fails to remedy this
deficiency (Appeal Br. 17); indeed, the Examiner does not rely on Lindahl
for a disclosure which remedies the noted deficiency. For the reasons
discussed, therefore, the Examiner has not established a prima facie case of
obviousness of the method of claim 6 "wherein a weight ratio of the alkali
metal hydroxide contained by a cake obtained in the draining step to a solid
portion contained by the pulp is 0.3 to 1.5" and its dependent claim 7.
8
Appeal2015-000603
Application 11/614,587
Moreover, claim 8, which depends from claim 5, requires a method
"wherein a weight ratio of the alkali metal hydroxide contained by a cake
obtained in the draining step to a solid portion contained by the pulp is
controlled by changing .... " (Appeal Br. 27-28 (emphasis added).) We
agree with Appellants that Wust does not teach "a step of obtaining cake
from draining alkali cellulose prior to etherification" (Appeal Br. 17), and
the Examiner does not rely on Lindahl for a disclosure which remedies that
deficiency. Therefore, the Examiner has not established a prima facie case
of obviousness of the method of claim 8, which not only requires a cake be
obtained in the draining step, but further requires the weight ratio of the
alkali metal hydroxide in the cake to a solid portion contained by the pulp to
be controlled in a particular manner.
Obviousness-Type Double Patenting
Appellants do not contest the provisional obviousness-type double
patenting rejection. Therefore, we summarily affirm that rejection.
SUMMARY
We affirm the rejection of claims 5 and 10---13 under 35 U.S.C.
§ 103(a) as unpatentable over Wust and Lindahl.
We reverse the rejection of claims 6-8 under 35 U.S.C. § 103(a) as
unpatentable over Wust and Lindahl.
We affirm the rejection of Claims 5-8 and 10---13 on the ground of
non-statutory obviousness-type double patenting over claims 5-8 and 10---12
of copending Application No. 11/615,367 in view of Lindahl.
9
Appeal2015-000603
Application 11/614,587
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
10