Ex parte Schaefer et al.

Board of Patent Appeals and Interferences

Aug 16, 2000

08199286 (B.P.A.I. Aug. 16, 2000)

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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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte BERND SCHAEFER, ERNST BUSCHMANN and
GERNOT REISSENWEBER
________________
Appeal No. 1997-2797
Application 08/199,286
________________
ON BRIEF
________________
Before GARRIS, PAK and OWENS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-7 which are all of the claims in the application.
The subject matter on appeal relates to a process for the
preparation of certain phosphorane derivatives and to a
process for the preparation of certain olefinically
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Application 08/199,286
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unsaturated compounds. This appealed subject matter is
adequately illustrated by independent claims 1 and 5, a copy
of which is appended to this decision.
The following references are relied upon by the examiner
as evidence of obviousness:
Regitz, Methods of Organic Chemistry, Vol. E1, pgs. 636-639
(1982).
March, Advanced Organic Chemistry, 3rd ed., pg. 847 (1985).
Claims 1-4 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Regitz.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over March.
OPINION
Neither of the above noted rejections can be sustained.
The Section 103 Rejection Over Regitz
The process defined by appealed claim 1 distinguishes
over the process of Regitz via the claim recitation "wherein
the chlorination is carried out in the presence of an alkali
metal hydroxide as hydrogen chloride acceptor and the chlorine
and said base are fed to the reaction mixture concurrently but
separately at the rates at which they are consumed, such that
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Application 08/199,286
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the pH does not rise above 9 throughout the reaction". In
contrast, the process of Regitz effects halogenation to form
phosphonium salts which are then isolated and converted by a
suitable base into the desired phosphorane product. It is the
examiner's fundamental position that it would have been
obvious to modify this prior art process in such a manner that
the chlorine and base are "fed to the reaction mixture
concurrently but separately at the rates at which they are
consumed, such that pH does not rise above 9" as required by
appealed claim 1.
As support for this position, the examiner urges that
"[t]he disclosed reaction [of Regitz] is sufficient to
motivate one of skill in the art to carry out the process as
claimed, as the presence of the base is to neutralize the acid
formed by the reaction of chlorine and phosphorane" and that,
"[a]s to applicants' requirement that the base and chlorine be
added to the reaction mixture concurrently but separately, at
the rates which they are consumed, one of skill would
recognize that in order to maintain the neutrality of the
acid, addition of base and chlorine would have to be at the
rate of consumption", (answer, page 3). We agree with the
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Application 08/199,286
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appellants, however, that the support proffered by the
examiner for his obviousness conclusion is evidentially
inadequate.
The Regitz reference clearly teaches adding a suitable
base after isolation of the phosphonium salts formed during
the halogenation step. Notwithstanding the examiner's
contrary view, nothing in this reference would have suggested
modifying this process in such a manner as to result in the
appellants' claimed process wherein the chlorine and base are
fed concurrently. Stated differently, the record before us
contains no evidence that an artisan with ordinary skill would
have regarded the sequence and isolation teachings of Regitz
as superfluous teachings which should be ignored rather than
followed.
In light of the foregoing we cannot sustain the
examiner's § 103 rejection of claims 1-4 and 7 as being
unpatentable over Regitz.
The Section 103 Rejection over March
On page 4 of the answer, the examiner sets forth the
following rationale in support of his obviousness conclusion:
Applicants claim the formation of olefinically
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Application 08/199,286
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unsaturated compounds from the reaction of the
halogenated phosphorane with an aldehyde or ketone.
March teaches the reaction of an aldehyde or ketone
with a phosphorane to form olefinically unsaturated
compounds. One of skill in the art would be
motivated to apply the teaching of March to form
olefinically unsaturated compounds in the manner
described by applicants. Further, the mere used
[sic, use] of a different starting material, whether
novel or known, in a conventional process to produce
the produce that one would expect therefrom, does
not render the process unobvious. In re Surrey et
al. (CCPA 1963) 319 F.2d 233, 183 USPQ 67; In re
Kanter (CCPA 1963) 399 F.2d 249, 158 USPQ 331.
The examiner's above quoted rationale is clearly
deficient for reasons fully detailed in the cases of In re
Ochiai, 71 F.3d 1565, 1569-1572, 37 USPQ2d 1127, 1131-1133
(Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 425, 37
USPQ2d 1663, 1666 (Fed. Cir. 1995). It follows that we also
cannot sustain the examiner's
§ 103 rejection of claims 5 and 6 as being unpatentable over
March.
SUMMARY
The decision of the examiner is reversed.
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Application 08/199,286
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REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
BRG/ki
Appeal No. 1997-2797
Application 08/199,286
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Keil & Weinkauf
1101 Connecticut Avenue, NW
Washington, DC 20036
Appeal No. 1997-2797
Application 08/199,286
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APPENDIX
1. A process for the preparation of "-chloromethylene-
triorganylphosphorane derivatives of the formula I
in which the radicals R can be the same or different and
denote C-organic substituents and A stands for cyano or a
group CO-B where B is a C-organic or O-organic radical which
has from 1 to 12 carbon atoms and is inert under chlorination
conditions, by chlorination of phosphoranes of formula II
with chlorine, wherein the chlorination is carried out in the
presence of an alkali metal hydroxide as hydrogen chloride
acceptor and the chlorine and said base are fed to the
reaction mixture concurrently but separately at the rates at
which they are consumed, such that the pH does not rise above
9 thoughout the reaction.
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Application 08/199,286
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5. A process for the preparation of olefinically
unsaturated compounds of formula V
in which R' and R'' denote hydrogen or C-organic radicals
which comprises: reacting a "-
chloromethylene- triorganylphosphorane
derivative I
in which the radicals R can be the same or different and
denote C-organic substitutents and A stands for cyano or a
group CO-B where B is a C-organic or O-organic radical which
has from 1 to 12 carbon atoms and is inert under chlorination
conditions, with a carbonyl compound IV
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Application 08/199,286
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wherein the derivative I is present in the reaction mixture
formed by the process defined in claim 1.