Ex Parte Siemer et al

Patent Trial and Appeal Board

Sep 20, 2016

12747702 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121747,702 06/11/2010 Michael Siemer
22850 7590 09/22/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
360226USOPCT 8049
EXAMINER
SHTERENGARTS, SAMANTHA L
ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SIEMER,
MATTHIAS MAASE, and INGO RICHTER1
Appeal2014-001900
Application 12/747,702
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to processes of
lightening the color of a mixture that contains an imidazolium salt. The
Examiner entered rejections under 35 U.S.C. § 112, fourth paragraph,
35 U.S.C. § 102(b), and 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b). We reverse the rejection
under§ 112, fourth paragraph, but affirm the rejections based on prior art,
except as to three claims.
1 Appellants state that the "real party in interest in this appeal is BASF SE."
App. Br. 2.
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Application 12/747,702
STATEMENT OF THE CASE
The Specification explains that the prior art "Arduengo process" of
preparing imidazolium salts "generally results in a dark to black mixture
which comprises the desired imidazolium salts. The color of the mixture is
obviously attributable to the presence of by-products." Spec. 1.
The Specification explains also that, in the prior art "carbonate
process" of synthesizing imidazolium salts, an intermediate 1-imidazole
compound must first be separated from a "dark mixture" before reaction
with a dialkyl carbonate to produce the imidazolium salt. Id. Accordingly,
it "would be advantageous for the process step of isolation of the
1-imidazole to be able to be dispensed with." Id.
Appellants' invention, thus, "relates to a method of lightening the
color of mixtures comprising imidazolium salts or imidazoles, wherein the
mixtures are treated with an oxidant." Spec. 1. The Specification discloses
that the oxidant "is preferably oxygen or a peroxide or peracid, with
particular preference being given to hydrogen peroxide." Id. at 8.
Claim 1, the sole independent claim on appeal, and claim 19, both
reproduced below, illustrate the appealed subject matter (Br. 10, 12):
Claim 1: A method of lightening the color of a mixture
comprising an imidazolium salt, comprising treating the
mixture with an oxidant.
Claim 19: The method according to claim 1, wherein
prior to said treating said mixture is a colored mixture, and
wherein said treating lightens the color of said colored mixture.
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Application 12/747,702
The following rejections are before us for review:
(1) Claims 19 and 21, under 35 U.S.C. § 112, fourth paragraph, as
failing to further limit the claims from which they depend (Final Action 3-
4);
(2) Claims 1, 5-12, 14, 19, and 21, under 35 U.S.C. § 102(b), as
anticipated by DE 10 2004 043 632 Al (published Sept. 3, 2006 (as
translated); hereinafter "DE '632") (Final Action 4---6)2
(3) Claims 13, 20, and 22, under 35 U.S.C. § 103(a) for obviousness
over DE '632 (Final Action 7-10);
(4) Claims 2 and 3, under 35 U.S.C. § 103(a) for obviousness over DE
'632 and WO 02/094883 A2 (published Nov. 28, 2002; hereinafter "WO
'883") (Final Action 11-13); and
(5) Claim 4, under 35 U.S.C. § 103(a) for obviousness over DE '632,
WO '883, and Ross (U.S. Patent No. 5,112,819 (issued May 12, 1992))
(Final Action 13-15).
ANTICIPATION
In finding that DE '632 anticipates claims 1, 5-12, 14, 19, and 21, the
Examiner cited i-f 16 and Examples 5 and 8 of the reference as disclosing the
treatment of an imidazolium salt-containing mixture with hydrogen
peroxide, as required by the rejected claims. Final Action 4--5.
The Examiner concluded that the preamble of claim 1, reciting "[a]
method of lightening the color" of a mixture that contains an imidazolium
2 Appellants cite to a translation of DE '632 submitted on March 7, 2013.
Br. 6-7. Although we reviewed that translation when considering
Appellants' arguments, we cite to the corresponding paragraphs in the
translation entered by the Examiner, which formed the basis for the
rejections on appeal.
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Application 12/747,702
salt (Br. 10), is an intended use of the claimed process, and does not add any
limitations to the sole process step (treating the imidazolium salt-containing
mixture) in the body of the claim. Final Action 5---6.
Appellants do not present separate arguments as to any of the claims
subject to this ground of rejection. Accordingly, we select claim 1 as
representative of the rejected claims. 37 C.F.R. 41.37(c)(l)(iv).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prim a facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants' arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner's prima facie case of anticipation as
to claim 1.
Appellants do not contend that the Examiner erred in finding that DE
'632 describes a method in which an imidazolium salt-containing mixture is
treated with peroxide. Rather, Appellants contend, when claim 1 is read in
light of the Specification, "the claimed method refers to the lightening of
dark to black colored by-products found within the salt-containing mixture
by oxidation of said by-products." App. Br. 5.
Moreover, Appellants contend, when viewed in light of the
Specification, an ordinary artisan would understand that the result of the
claimed process "is a lighter colored version of said mixture which still
comprises the imidazolium salt. Thus, the imidazolium salt is maintained
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throughout the process of the claimed method - no conversion of the salt
occurs." Id. at 6.
Appellants contend that, in contrast to the claim interpretation they
advance, DE '632 does not disclose a process that lightens the color of an
imidazolium salt-containing mixture, "nevermind a dark to black colored
imidazolium-salt containing mixture." Id. Moreover, Appellants contend,
the reaction of the imidazolium salt with the peroxide in DE '632 converts
the salt into a different compound, again contrary to the claim interpretation
they advance. Id. at 6-7.
We do not find Appellants' arguments persuasive.
We acknowledge, as noted above, and as Appellants contend, that the
Specification describes using an oxidant such as hydrogen peroxide to
lighten the dark or dark to black color that occurs when producing
imidazolium salts according to the Arduengo or carbonate processes. See
Spec. 1, 8.
We acknowledge also that the example in DE '632 cited by the
Examiner results in conversion of the imidazolium salt to a distinct salt, and
does not mention any lightening of color during the process. See, e,g., DE
'632 i-f 110 (Example 8, describing reaction of mixture of water, catalyst, and
1-butyl-3-methylimidazolium formate with hydrogen peroxide to yield 1-
butyl-3-methylimidazolium carbonate/hydrogencarbonate).
Claim 1, however, does not recite that the imidazolium salt-containing
mixture has a dark or dark to black color. Nor does claim 1 limit the
treatment step to one that does not convert the imidazolium salt to a distinct
compound. Rather, claim 1 recites a process in which an imidazolium salt-
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containing mixture is treated with an oxidant, a process that DE '632
undisputedly describes.
Appellants, moreover, do not persuade us that claim 1 is properly
interpreted to require treatment of a dark-colored mixture, or a process in
which the imidazolium salt is not converted to a distinct product. To the
contrary, it is well settled that "while 'the specification [should be used] to
interpret the meaning of a claim,' courts must not 'import[ ] limitations from
the specification into the claim.' ... [I]t is improper to 'confin[ e] the claims
to th[e] embodiments' found in the specification .... " In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (quoting Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (citations omitted,
bracketed text in internal quotes in original).
Thus, "during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed." In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Ultimately therefore, "[a]bsent claim language carrying a narrow meaning,
the PTO should only limit the claim based on the specification ... when [it]
expressly disclaim[s] the broader definition." In re Bigio, 381F.3d1320,
1325 (Fed. Cir. 2004)
In addition, Appellants' suggestion, that the preamble of claim 1
requires the treated mixture to be a colored mixture which is lightened by the
oxidant treatment, is undermined by claims 19 and 21. Specifically, claims
19 and 21, both of which ultimately depend from claim 1, recite that, "prior
to said treating[,] said mixture is a colored mixture, and wherein said
treating lightens the color of said colored mixture." App. Br. 12. Reading
the limitations from claims 19 and 21 into claim 1 would make claims 19
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and 21 superfluous. We, therefore, are not persuaded that the preamble of
claim 1 reasonably requires the treated mixture to be a colored mixture
which is lightened by the oxidant treatment. See Beachcombers, Int 'l Inc. v.
Wildewood Creative Prods., Inc., 31 F.3d 1154, 1162 (Fed. Cir. 1994).
Accordingly, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of anticipation as to claim 1. We, therefore,
affirm the Examiner's rejection under§ 102(b) of claim 1 over DE '632.
Because they were not argued separately, claims 5-12 and 14 fall with
claim 1. 37 C.F.R. 41.37(c)(l)(iv).
As to claims 19 and 21, however, both of those claims expressly
require the treated mixture to be a colored mixture which is lightened by the
oxidant treatment, as discussed above. See App. Br. 12. In contrast, the
Examiner concedes that DE '632 "remains silent regarding the specific
color( s) of the mixtures employed in the processes." Ans. 21. The
Examiner, moreover, does not direct us to evidence in DE '632, or elsewhere
in the record, supporting a finding that the treated mixtures in DE '632
inherently were colored mixtures. See id. at 21-24. Accordingly, we
reverse the Examiner's rejection of claims 19 and 21 as anticipated by DE
'632.
OBVIOUSNESS--CLAIMS 13, 20, AND 22
The Examiner rejected claims 13, 20, and 22 for obviousness over DE
'632. Final Action 7-10. Specifically, the Examiner concluded that the
temperature range recited in claim 13, which depends from claim 1, would
have been obvious in view of DE '632's disclosure of a temperature range
for its process that entirely encompasses the claimed range. Id. at 8 (citing
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DE '632 if 20). As to claim 20, which depends directly from claim 1, and
claim 22, which depends from claim 1 through claim 21, the Examiner
concluded that the 1,3-diethylimidazolium acetate recited in those claims
would have been viewed as an obvious variant of the compounds treated
with peroxide in DE '632's Example 8. Id. at 8-10.
Appellants do not identify error in the reasoning underlying the
Examiner's conclusion of obviousness. Rather, Appellants rely on their
arguments, addressed above, as to the Examiner's finding of anticipation in
relation to claim 1. App. Br. 7-8. As discussed above, however, we do not
find those arguments persuasive as to claim 1.
As to Appellants' suggestion that the claimed process yields
unexpected results (id. at 8 (citing Spec. 9, 11. 23-25)), it is well settled that,
"when unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art."
In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). In the
instant case, Appellants do not direct us to a comparison to any specific prior
art process.
Accordingly, we affirm the Examiner's rejection of claims 13 and 20
for obviousness over DE '632. As noted above, however, the Examiner does
not persuade us that DE '632 describes a process meeting all of the
requirements of claim 21. Because the Examiner does not explain how DE
'632 renders obvious a process having all of the features of claim 21, we
also reverse the Examiner's rejection of its dependent, claim 22.
OBVIOUSNESS--CLAIMS 2 AND 3
The Examiner rejected claims 2 and 3 for obviousness over DE '632
and WO '883. Final Action 11-13. The Examiner concluded that, although
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the imidazolium salt-containing mixture treated with peroxide in DE '632
was not obtained by the processes recited in claims 2 and 3, mixtures
prepared by those methods were known in the art, as evidenced by WO '883,
and it would have been obvious to treat such mixtures with peroxide
according to the methods taught in DE '632. See id.
Appellants do not identify error in the reasoning underlying the
Examiner's conclusion of obviousness. Rather, Appellants rely on their
arguments, addressed above, as to the Examiner's finding of anticipation in
relation to claim 1. App. Br. 7-8. Appellants, moreover, contend that claim
3 recites the Arduengo process of preparing imidazolium salts, which results
in a dark to black mixture. Id. at 8.
As discussed above, however, we do not find Appellants' arguments
persuasive as to claim 1. In addition, claim 3 does not recite treating a dark
to black mixture, and we decline to import non-recited limitations from the
Specification into the claim, for the reasons discussed above. Accordingly,
we affirm the Examiner's rejection of claims 2 and 3 for obviousness over
DE '632 and WO '883.
OBVIOUSNESS--CLAIM 4
The Examiner rejected claim 4 for obviousness over DE '632, WO
'883, and Ross. Final Action 13-15. The Examiner concluded that,
although the combination of DE '632 and WO '883 did not teach treating,
with peroxide, an imidazolium salt-containing mixture obtained by the
process recited in claim 4, Ross suggested that it was known in the art that
imidazolium salt-containing mixtures could be prepared by the claimed
methods, and it would have been obvious to treat such mixtures with
peroxide according to the teachings of DE '632. See id.
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Appellants do not identify error in the reasoning underlying the
Examiner's conclusion of obviousness. Rather, Appellants rely on their
arguments, addressed above, as to the Examiner's finding of anticipation in
relation to claim 1. App. Br. 7-8. Appellants, moreover, contend that claim
4 recites the carbonate process of preparing imidazolium salts, which results
in a dark colored mixture. Id. at 8.
As discussed above, however, we do not find Appellants' arguments
persuasive as to claim 1. In addition, claim 4 does not recite treating a dark
colored mixture, and we decline to import non-recited limitations from the
Specification into the claim, for the reasons discussed above. Accordingly,
we affirm the Examiner's rejection of claim 4 for obviousness over DE '632,
WO '883, and Ross.
REJECTION UNDER
35 U.S.C. § 112, FOURTH PARAGRAPH
The Examiner rejected claims 19 and 21, under 35 U.S.C. § 112,
fourth paragraph, for failure to further limit the claims from which they
depend. Final Action 3--4. The Examiner concluded that "[h]aving a color
is a required limitation of said mixture [of claim 1], and therefore, claims 19
and 21 do not add any additional limitations and do not further limit the
claims from which they depend." Id. at 4.
In contrast, however, the Examiner inconsistently concluded, in
relation to the anticipation rejection, that the preamble of claim 1 does not
require the treated mixture to be a colored mixture which is lightened by the
oxidant treatment. Final Action 5-6 (contending that the preamble of claim
1 is merely a recitation of intended use).
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In any event, as discussed above in relation to the Examiner's
anticipation rejection, reading the limitations from claims 19 and 21 into
claim 1 would make claims 19 and 21 superfluous. We, therefore, are not
persuaded that the preamble of claim 1 reasonably requires the treated
mixture to be a colored mixture which is lightened by the oxidant treatment.
See Beachcombers, Int 'l v. Wildewood Creative Prods., 31 F.3d at 1162.
Because claim 1 does not require the treated mixture to be a colored mixture
which is lightened by the oxidant treatment, whereas claims 19 and 21 add
that limitation to the claimed process, we conclude that claims 19 and 21
further limit claim 1. We, therefore, reverse the Examiner's rejection of
claims 19 and 21 under § 112, fourth paragraph.
SUMMARY
For the reasons discussed, we reverse the Examiner's rejection of
claims 19 and 21, under 35 U.S.C. § 112, fourth paragraph.
We affirm the Examiner's rejection of claims 1, 5-12, and 14 under
35 U.S.C. § 102(b) as anticipated by DE '632.
However, we reverse the Examiner's rejection of claims 19 and 21
under 35 U.S.C. § 102(b) as anticipated by DE '632.
We affirm the Examiner's rejection of claims 13 and 20 under 35
U.S.C. § 103(a) for obviousness over DE '632.
However, we reverse the Examiner's rejection of claim 22 under 35
U.S.C. § 103(a) for obviousness over DE '632.
We affirm the Examiner's rejection of claims 2 and 3 under 35 U.S.C.
§ 103(a) for obviousness over DE '632 and WO '883.
We affirm the Examiner's rejection of claim 4 under 35 U.S.C.
§ 103(a) for obviousness over DE '632, WO '883, and Ross.
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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-IN-PART
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