Ex Parte Nedden

Patent Trial and Appeal Board

May 24, 2017

12523007 (P.T.A.B. May. 24, 2017)

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.
12/523,007 07/24/2009 Hans Guenter Nedden 3205-1010 5141
466 7590 05/26/2017
YOUNG fr THOMPSON
EXAMINER
209 Madison Street QIAN, YUN
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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):
DocketingDept@young-thompson.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte HANS GUENTER NEDDEN
Appeal 2015-007848
Application 12/523,007
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007848
Application 12/523,007
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
22—59. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
A hearing was held in this appeal on May 9, 2017.
We AFFIRM.
Appellant’s invention is directed to a process for preparing cationic
rhodium complexes and in particular for the large-scale manufacture of
cationic rhodium diolefin phosphorus ligand complexes (Spec. 1:2—3).
Claim 22 is illustrative:
22. A process for the synthesis of a cationic rhodium complex,
comprising:
(a) forming a mixture of a rhodium-diolefin-1,3-diketonate
compound and a phosphorus ligand in a ketone solvent,
(b) mixing an acid with the mixture to form a solution of the
cationic complex,
(c) evaporating at least a portion of the solvent from the
solution, thereby to produce the cationic rhodium complex in the form
of a slurry or concentrated solution, and
(d) treating the slurry or concentrated solution with an alcohol.
Appellant appeals the following rejections:
1. Claims 22—59 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1—11, 13—21,
25, 26, 28, and 29 of Nedden (US Patent 8,546,570 B2).
2. Claims 22—59 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ramsden (WO 2005/032712 Al) in view of Peschko (US
2005/0250951 Al).
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Appeal 2015-007848
Application 12/523,007
FINDINGS OF FACT & ANALYSIS REJECTION
Rejection (1): Obviousness-type Double Patenting
Appellant argues that the Examiner has not established that Nedden’s
claims recite the particular order of steps recited in the claims on appeal
(App. Br. 4—5). Appellant contends that the Examiner’s obviousness-type
double patenting rejection is improper because it does not address these
additional differences between the Nedden’s claims and the claims under
appeal (App. Br. 5). Appellant contends that the Examiner’s determination
that the order of steps recited in the appealed claims would have been
obvious based upon case law is improper because the Examiner does not
address Appellant’s argument that the facts in the applied case law are not
the same or similar to the facts presented in this appeal (Reply Br. 1—2).
The Examiner finds that Nedden’s claims 1—11, 13—21, 25, 26, 28,
and 29 would have rendered obvious the subject matter of claims 22—59 of
the present appeal (Final Act. 3). The Examiner finds that Nedden teaches a
process for preparing cationic rhodium complexes. Id. The Examiner finds
that the same homogeneous solutions were achieved after mixing of rhodium
precursor, an acid and phosphorus ligand in a ketone solvent (Ans. 5). The
Examiner finds that the step of crystallizing out the desired product by
adjusting the concentration of reaction mixture (i.e., evaporating) and
changing the polarity of the solvent(s) (addition of alcohol) would have been
obvious to one of ordinary skill in the art absent evidence to the contrary.
Id.
We find that the Examiner’s rejection is reasonably based upon a
finding that Nedden’s claims recite the presently claimed method steps,
although not in the same order. The Examiner’s finding that the ordering of
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Appeal 2015-007848
Application 12/523,007
the method steps would have been obvious absent evidence to the contrary is
reasonable as both Nedden’s and Appellant’s process use similar steps and
produce a suitable cationic rhodium complex. For example, Nedden’s claim
1 includes the steps of: 1) reacting a rhodium-diolefm-l,3-diketonate and an
acid in a ketone solvent, 2) adding a stabilizing olefin to form a stabilised
cationic rhodium compound, and 3) mixing a phosphorus ligand with the
solution of the stabilised cationic rhodium compound to form a solution of
the cationic complex. Claims 18 and 19 depend from claims 1 and 18,
respectively, and further recites the steps of: 1) evaporating at least a portion
of the ketone solvent from the solution obtained in step (c) to form a slurry
or a concentrated solution and 2) adding an alcohol co-solvent to the slurry
or concentrated solution.
Nedden’s claims include all the steps recited in Appellant’s present
claims on appeal. Nedden’s claim 1 includes adding the acid to the
rhodium-diolefin-1,3-diketonate compound before adding the phosphorus
ligand. In Appellant’s claim 22, the rhodium-diolefin- 1,3-diketonate
compound and phosphorus ligand are mixed with the ketone solvent and the
acid is added to that mixture. The resulting mixture in either process is a
mixture of acid, rhodium-diolefin- 1,3-diketonate compound, phosphorus
ligand and ketone solvent. The mixture is then evaporated and an alcohol is
added in both the Nedden process and the presently appealed claims.
Appellant has not directed us to any evidence that the particular ordering of
the steps is critical to the claimed invention.
On this record, we affirm the Examiner’s obviousness-type double
patenting rejection of claims 22—59 over the claims in Nedden.
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Appeal 2015-007848
Application 12/523,007
Rejection (2): 35 U.S.C. § 103
Appellant argues that the Examiner has not established that Ramsden1
teaches an evaporation step to concentrate the solution of the cationic
rhodium complex formed in step (b) of the claims (App. Br. 11; Reply Br.
2).
Independent claims 22 and 40 each include a step of evaporating at
least a portion of the ketone solvent from rhodium-diolefin-1,3-diketonate
compound, phosphorus ligand, acid and ketone solvent solution. The
Examiner finds that Ramsden does not teach evaporating a portion of the
ketone solvent (Final Act. 4). The Examiner finds in the Answer that
Ramsden teaches using Schlenk flasks which are not a sealed vessel so that
the solvent(s) in the reaction mixture are constantly evaporating (Ans. 7).
The Examiner finds that the constant evaporation from the Schlenk flasks
would have resulted in a concentrated solution or slurry. Id.
Appellant correctly responds that the Schlenk flasks in Ramsden are
used to hold the reagents that are then fed to a reaction chamber (Reply Br.
2). Appellant argues that Ramsden does not teach evaporating the solution
in the reaction chamber to form a concentrated solution because Ramsden
teaches using a reflux condenser to reclaim and recirculate the evaporated
material back to the reactor. Id.
The Examiner has not shown where the claimed evaporation step of
the rhodium-diolefm-1,3-diketonate compound, phosphorus ligand, acid and
1 The Examiner relies solely on Ramsden or an unsupported statement that
evaporation would have been obvious to teach the evaporation step (Ans. 7;
Final Act. 7—8). As the Examiner does not rely on Peschko to teach the
evaporation step, the focus in this decision is on Ramsden alone (Final Act.
7).
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Appeal 2015-007848
Application 12/523,007
ketone solvent solution to form a concentrated solution is taught or
suggested by the combined teachings of Ramden and Peschko. On this
record, we reverse the Examiner’s § 103 rejection.
DECISION
The Examiner’s decision is affirmed on the ground of nonstatutory
obviousness-type double patenting.
The Examiner’s rejection of claims 22—59 under 35 U.S.C. § 103(a) is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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