Ex parte Schon

Board of Patent Appeals and Interferences

Sep 28, 1999

08221224 (B.P.A.I. Sep. 28, 1999)

Application for patent filed March 31, 1994.1
-1-
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journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte STEVEN G. SCHON
________________
Appeal No. 1996-2320
Application 08/221,2241
________________
ON BRIEF
________________
Before WINTERS, DOWNEY and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s nonfinal, third
Appeal No. 1996-2320
Application 08/221,224
The board has jurisdiction as discussed in Ex parte2
Lemoine, 46 USPQ2d 1432 (Bd. Pat. App. & Int. 1995).
-2-
rejection of claim 1. Claims 2-15, which are the only other2
claims remaining in the application, have been indicated
allowable by the examiner.
THE INVENTION
Appellant’s claimed invention is directed toward a
process for making a product consisting essentially of alkane
sulfonic acid and/or alkane sulfonyl chloride in a continuous
reactor containing stationary mixing elements to promote plug
flow. Claim 1, which is the only claim on appeal, reads as
follows:
1. A process for the preparation of a product
consisting essentially of alkane sulfonic acid, alkane
sulfonyl chloride or mixtures thereof comprising continuously
reacting a compound of the formula RSX, where X is hydrogen or
a radical of the formula-SR and R and R are alkyl groups1 1
having one to 20 carbon atoms, with at least a stoichiometric
amount of chlorine in a reaction zone free of moving,
mechanical agitating means and containing aqueous hydrochloric
acid at a reactant feedrate at least sufficient to achieve a
vigorous evolution of hydrochloride gas, passing the contents
of said reaction zone through, and in contact with stationary
mixing elements to promote plug-flow, withdrawing
hydrochloride gas, and separately withdrawing said product
from the reactor.
Appeal No. 1996-2320
Application 08/221,224
-3-
THE REFERENCES
Guertin 3,626,004 Dec. 7,
1971
Koch Engineering Company, Inc. (Koch) brochure, Static Mixing
Technology 1-12 (1991).
Abstract of Donald M. Marske, “Chlorine contact chamber
design. Field evaluation”, 120 Water Sewage Works 70-77
(1973), 78 Chemical Abstracts 245-46, abstract no. 139934m
(1973).
THE REJECTION
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Guertin in view of Koch and Marske.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection. Under the
provisions of 37 CFR § 1.196(b), we enter a new rejection of
claims 1-4 and 8-15.
There is no dispute that Guertin discloses all of the
Appeal No. 1996-2320
Application 08/221,224
-4-
elements of appellant’s claim 1 except the use of stationary
mixing elements to promote plug flow.
The examiner argues that “Koch teaches that the presence
of baffles in a hollow tube reactor will produce mixing, but
there is no indication by Koch that such mixing is of the plug
flow type” (answer, page 3). The examiner, therefore, relies
upon Marske.
Marske teaches that in chambers for contacting water
sewage with chlorine, longitudinal baffles are more efficient
than cross baffles, and plug flow is best achieved with a high
length to width ratio. The examiner argues that the
references indicate that if Koch’s static mixers were placed
in Guertin’s reactor, mixing would occur, and Marske indicates
that this mixing would be plug flow (answer, page 5).
Apparently, the examiner overlooked the teaching on page 7 of
Koch regarding use of his static mixing units to produce plug
flow.
The examiner provides no explanation as to why one of
ordinary skill in the art would have desired plug flow in
Guertin’s reactor, or why, to obtain that plug flow, such a
Appeal No. 1996-2320
Application 08/221,224
-5-
person would have combined Koch’s disclosure of static mixers
with Marske’s disclosure regarding using a high length to
width ratio in a water sewage chlorination chamber to obtain
plug flow. It is clear that the motivation relied upon by
the examiner for combining the references so as to arrive at
appellant’s claimed process comes solely from the description
of appellant's process in his specification. Thus, the
examiner used impermissible hindsight when rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse
the examiner’s rejection.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 1-4 and 8-15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Guertin in view of Koch.
Appeal No. 1996-2320
Application 08/221,224
-6-
Claim 1: Guertin discloses a process for making alkyl
sulfonyl chlorides (col. 1, lines 3-4) by continuously
reacting a compound of the formula RSX, where X is hydrogen or
a radical of the formula SR’ and R and R’ are alkyl groups
having one to 20 carbon atoms (col. 1, lines 52-56), with at
least a stoichiometric amount of chlorine in a reaction zone
free of a mechanical agitation device and containing aqueous
hydrochloric acid at a feed rate at least sufficient to
achieve a vigorous evolution of hydrochloride gas (col. 1,
lines 33-43; col. 2, lines 17-19). The product and
hydrochloride gas are separately withdrawn from the reactor
(col. 2, line 69 - col. 3, line 7).
Guertin does not disclose use of stationary mixing
elements in the reactor to promote plug flow. However, Koch
discloses (page 7) that “[s]tatic mixing units provide the
radial mixing and plug flow needed to perform continuous
chemical reactions.” Koch teaches (page 7) that “[a]n empty
pipe makes a poor continuous reactor because the material in
the center of the pipe travels at nearly twice the average
product velocity, while the material at the wall travels much
slower” such that material in the center exits before it is
Appeal No. 1996-2320
Application 08/221,224
-7-
fully reacted and, because the material at the wall travels
so slowly, product can build up on the wall and possibly
degrade. Koch teaches that “[b]y inducing radial mixing, the
Koch static mixing unit provides plug flow and uniformity in
viscosity, molecular weight, temperature, and degree of
reaction. This eliminates product buildup while raising
throughput and yield.” See id. Another advantage of Koch’s
static mixers, Koch discloses, is that “a homogeneous mix is
achieved in just a few pipe diameters” (page 9). Koch further
teaches that in gas liquid reactions, which is the type in
Guertin’s process, use of a static mixer breaks the gas into
fine bubbles which are uniformly dispersed throughout the
liquid such that there is excellent gas-liquid contact in a
small volume, and mass transfer efficiency is high (page 12).
Koch, therefore, would have fairly suggested, to one of
ordinary skill in the art, using a static mixer in Guertin’s
reactor so that the benefits of use of a static mixer
discussed above, including the benefits resulting from plug
flow, are obtained.
Appeal No. 1996-2320
Application 08/221,224
-8-
Appellant argues that the examples in his specification
indicate that his process produces an unexpected result, which
is a reduction in undesirable oxidizable impurities (brief,
pages 6-7). As indicated in appellant’s specification (page
7, lines 5-13), these oxidizable impurities are unreacted
components or compounds including intermediates which are
produced during the process. Koch’s disclosure (page 7) that
material in an empty pipe, which was used in appellant’s
comparative examples, results in unreacted material at the
center exiting before it is fully reacted, whereas use of a
static mixer produces uniform plug flow, indicates that
appellant’s observation that less unreacted feed and
intermediates exit the reactor when a static mixer is used is
an expected result rather than an unexpected result.
“Expected beneficial results are evidence of obviousness of a
claimed invention, just as unexpected beneficial results are
evidence of unobviousness.” In re Skoll, 523 F.2d 1392, 1397,
187 USPQ 481, 484 (CCPA 1975); In re Skoner, 517 F.2d 947,
950, 186 USPQ 80, 82 (CCPA 1975); In re Gershon, 372 F.2d 535,
537, 152 USPQ 602, 604 (CCPA 1967).
Appeal No. 1996-2320
Application 08/221,224
-9-
Claim 2: The above discussion of claim 1 applies to the
elements of claim 2 which are in claim 1. In addition, Koch
teaches that the static mixers can fit vessels of any size and
shape (page 1) and can be made of intersecting corrugated
sheets forming open channels (page 2) which direct fluid
radially (page 7).
Claim 3: Adjacent Koch static mixers are positioned 90E
relative to each other (page 2).
Claim 4: Appellant’s statement that the product is
predominantly alkyl sulfonyl chloride when made at a
temperature of about -10 to about 50EC, and contains alkyl
sulfonic acid in a major amount when a higher reaction
temperature of about 85 to 115EC is used (specification, page
6, lines 16-20), indicates that Guertin’s product, which is
made at a temperature of about -10 to about 50EC (col. 1,
lines 40-41), contains some alkyl sulfonic acid. Guertin’s R
can be C alkyl, which encompasses C , and Guertin’s X can1-20 1-6
be hydrogen (col. 1, lines 52-55).
Claim 8: Guertin’s product is alkyl sulfonyl chloride
Appeal No. 1996-2320
Application 08/221,224
-10-
(col. 1, lines 3-4). Guertin’s R can be C alkyl, which1-20
encompasses C , and Guertin’s X can be hydrogen (col. 1,1-6
lines 52-55).
Claim 9: Guertin’s temperature range is about -10 to
about 50EC (col. 1, lines 40-41).
Claim 10: Guertin’s feed rate range is at least about
0.005 lbmole/hr-ft , preferably about 0.005 to about3
0.03 lbmole/hr-ft (col. 3, lines 40-46). Depending on the3
length of the reactor, this range may be lower than
appellant’s recited range of about 0.5 to about 8.0 lbmole/hr-
ft . However, the teaching by Koch that use of a static mixer2
provides “consistent, predictable mixing performance,
regardless of flow rate or equipment dimensions” (page 2)
would have fairly suggested, to one of ordinary skill in the
art, using higher feed rates, such as those recited by
appellant, when Guertin’s reactor contains a static mixer.
Claim 11: Guertin teaches that R can be methyl (col. 1,
line 55).
Claim 12: Appellant’s statement that the product is
predominantly alkyl sulfonyl chloride when made at a
Appeal No. 1996-2320
Application 08/221,224
-11-
temperature of about -10 to about 50EC, which is the
temperature range used by Guertin (col. 1, line 41), but
contains alkyl sulfonic acid in a major amount when a higher
reaction temperature of about 85 to 115EC is used
(specification, page 6, lines 16-20), indicates
that Guertin’s product is predominantly alkyl sulfonyl
chloride, but contains alkyl sulfonic acid. Guertin’s R can
be C alkyl, which encompasses C , and Guertin’s X can be1-20 1-6
hydrogen (col. 1, lines 52-55).
Claim 13: The upper limit, i.e., about 50EC, of Guertin’s
temperature range includes temperatures somewhat in excess of
50EC because “about”, as used by Guertin, evidently permits
some
tolerance. See In re Ayers, 154 F.2d 182, 185, 69 USPQ 109,
112, (CCPA 1946).
Claim 14: The limitation recited in this claim would have
been fairly suggested to one of ordinary skill in the art for
the reason given above regarding claim 10.
Claim 15: Guertin teaches that R can be methyl (col. 1,
line 55).
Appeal No. 1996-2320
Application 08/221,224
-12-
We do not reject claims 5-7 because we do not find in
Guertin a disclosure or suggestion of using a reaction
temperature of about 85 to about 115EC.
DECISION
The rejection of claim 1 under 35 U.S.C. § 103 over
Guertin in view of Koch and Marske is reversed. Under the
provisions of 37 CFR § 1.196(b), a new rejection of claims 1-4
and 8-15 has been entered.
REVERSED, 37 CFR § 1.196(b)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
MARY F. DOWNEY ) BOARD OF
Appeal No. 1996-2320
Application 08/221,224
-13-
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 1996-2320
Application 08/221,224
-14-
Robert G. Hoffmann
Elf Atochem North America, Inc.
Patent Department
2000 Market Street
Philadelphia, PA 19103-3222
TJO/ki