Ex parte Renbaum et al.

Board of Patent Appeals and Interferences

Aug 24, 1999

08094933 (B.P.A.I. Aug. 24, 1999)

Application for patent filed July 21, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LOUIS RENBAUM, MARK S. SOLOMON
and WILLIAM D. TIPPINS
________________
Appeal No. 96-2425
Application 08/094,9331
________________
ON BRIEF
________________
Before KIMLIN, ELLIS and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-9, which are all of the claims remaining in the
application.
Appeal No. 96-2425
Application 08/094,933
Appellants state that “[b]y the term ‘digestion’ is2
meant the stage at which the intermediate aminobenzylamines
rearrange to form methylene diphenylamines and polymethylene
polyphenylamine” (specification, page 4, lines 19-22).
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THE INVENTION
Appellants’ claimed invention is directed toward a
process for preparing a reaction product containing methylene
diphenylamine. Appellants react aniline and formaldehyde in
the presence of an acid catalyst, and reduce the acid level of
the reaction mixture during digestion of the reaction
mixture. Appellants also claim the product made by the2
process. Claims 1 and 9 are illustrative and read as follows:
1. A process for preparing a reaction product
containing methylene diphenylamine, comprising reacting
aniline and formaldehyde in the presence of catalyst;
reducing the acid level of the resulting reaction mixture
during digestion of the reaction mixture, and followed by
completely neutralizing the reaction product after digestion.
9. A reaction product comprising methylene
diphenylamine which is prepared by the process of claim 1.
THE REFERENCE
Bolton et al. (Bolton) 5,286,760 Feb. 15, 1994
(filed Oct. 9,
Appeal No. 96-2425
Application 08/094,933
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1992)
THE REJECTIONS
The claims stand rejected as follows: claims 1-9 under
the judicially created doctrine of obviousness-type double
patenting over claims 1-9 of Bolton; claims 1-9 under 35
U.S.C. § 103 over Bolton; and claim 9 under 35 U.S.C. § 102(e)
as anticipated by or, in the alternative, under 35 U.S.C.
§ 103 as obvious over Bolton.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with the
examiner that the reaction product recited in appellants’
claim 9 is anticipated by and obvious over Bolton, and obvious
over Bolton’s claim 9. Accordingly, we sustain all of the
aforementioned rejections of claim 9. We agree with
appellants, however, that the rejections of claims 1-8 are not
well founded. We therefore do not sustain these rejections.
Rejections of claim 9
Appeal No. 96-2425
Application 08/094,933
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Bolton discloses a process wherein a reaction product
containing methylene diphenylamine is prepared by reacting
aniline and formaldehyde in the presence of an acid catalyst
(col. 2, lines 6-9). The acid is partially neutralized at the
condensation stage, which is the stage at which the aniline
and formaldehyde react in the presence of the acid (col. 2,
lines 13-15, 38-43 and 66). This stage takes place before the
digestion stage, which is the stage at which the intermediate
aminobenzylamines rearrange to form the reaction product
containing methylene diphenylamine and polymethylene
polyphenyl (col. 2, lines 44-50 and 66-68). Thus, Bolton’s
process differs from that of appellants in that Bolton’s
partial neutralization takes place during the condensation
stage whereas appellants’ partial neutralization takes place
during the digestion stage.
Appellants argue that because they partially neutralize
their catalyst during the digestion stage rather than the
condensation stage, the rearrangement of the intermediates of
methylene diphenylamine does not proceed in the same manner as
in Bolton’s process and that, therefore, appellants’ product
is not the same as that of Bolton (brief, pages 7-8).
Appeal No. 96-2425
Application 08/094,933
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Appellants argue that Bolton’s removal of catalyst prior to
digestion reduces the potential for rearrangement of the
condensation reaction mixture to form unwanted compounds, and
that Bolton teaches that reducing the acid level during the
condensation stage has a significant effect on the level of
impurities in the product (brief, page 7).
Appellants, however, state that even though appellants do
not perform Bolton’s condensation stage partial
neutralization, to which Bolton attributes the low level of
impurities of his product, appellants’ product has impurity
levels which are comparable to those of Bolton’s product
(brief, pages 4, 6 and 8). Thus, appellants acknowledge that
their product is substantially the same as that of Bolton.
The patentability of a product made by a recited process,
as in appellants’ claim 9, is determined based on the product
itself, not on the method of making it. See In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (“If the
product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is
Appeal No. 96-2425
Application 08/094,933
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unpatentable even though the prior art product was made by a
different process.”). Whether a rejection is under 35 U.S.C.
§ 102 or § 103, when appellants’ product and that of the prior
art appear to be identical or substantially identical, the
burden shifts to appellants to provide evidence that the prior
art product does not necessarily or inherently possess the
relied-upon characteristics of appellants’ claimed product.
See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324,
326 (CCPA 1974). The reason is that the Patent and Trademark
Office is not able to manufacture and compare products. See
Best, 562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972).
Because, as acknowledged by appellants, Bolton’s
disclosed and claimed (claim 9) product is substantially the
same as that of appellants, and because appellants have not
carried their burden of providing evidence which establishes
that their claimed product is patentable over that of Bolton,
we affirm the obviousness-type double patenting rejection of
Appeal No. 96-2425
Application 08/094,933
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appellants’ claim 9 and the rejection of that claim under 35
U.S.C. § 102(e) as being anticipated by Bolton. Because
anticipation is the epitome of obviousness, see In re Skoner,
517 F.2d 947, 950, 186 USPQ 80, 83 (CCPA 1975); In re Pearson,
494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974), we affirm
the rejection of appellants’ claim 9 under 35 U.S.C. § 103
over Bolton.
Rejections of claims 1-8
The examiner argues that appellants’ partial
neutralization during digestion encompasses partial
neutralization at the very beginning of digestion which, the
examiner states, “is obviously the same as Bolton” (answer,
page 4). This argument is not consistent with Bolton’s
disclosure. Bolton states that “[i]t is a distinct feature of
the invention that the acid level of the reaction mixture is
maintained at a low level at the end of the condensation
stage” (col. 3, lines 27-29) and that “[i]t is a distinct
feature of the invention that the acid level is reduced before
the reaction mixture is digested” (col. 3, lines 58-60).
These excerpts clearly indicate that Bolton’s partial
Appeal No. 96-2425
Application 08/094,933
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neutralization takes place before, not during, the digestion
stage. As pointed out by appellants (reply brief, page 3),
“before” is not “during”, and the examiner has not explained
why one of ordinary skill in the art would have modified
Bolton’s process such that the partial neutralization takes
place during the digestion stage.
Accordingly, we conclude that the examiner has not
carried his burden of establishing a prima facie case of
obviousness of the process recited in any of appellants’
claims 1-8. Hence, we do not sustain the rejection of these
claims under 35 U.S.C. § 103. Similarly, because examiner has
not explained why the partial neutralization recited in
Bolton’s claims at the condensation stage would have fairly
suggested, to one of ordinary skill in the art, partial
neutralization during the
digestion stage, we do not sustain the obviousness-type double
patenting rejection of appellants’ claims 1-8.
DECISION
The rejections of claims 1-8 under the judicially created
Appeal No. 96-2425
Application 08/094,933
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doctrine of obviousness-type double patenting over claims 1-9
of Bolton and under 35 U.S.C. § 103 over Bolton are reversed.
The rejections of claim 9 under the judicially created
doctrine of obviousness-type double patenting, under 35 U.S.C.
§ 102(e) as anticipated by Bolton, and under 35 U.S.C. § 103
as obvious over Bolton, are affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Bayer Corporation
Patent Department
100 Bayer Road
Pittsburgh, PA
Appeal No. 96-2425
Application 08/094,933
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TJO/ki