Ex Parte Snoble et al

Board of Patent Appeals and Interferences

Dec 6, 2007

10361349 (B.P.A.I. Dec. 6, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KAREL A.J. SNOBLE, SHIHAN CHEN,
RUSS JOHNSON, STEPHEN F. YATES,
ALEXANDER M. BERSHITSKY, and CHAD D. GARIBALDI
__________

Appeal 2007-3903
Application 10/361,349
Technology Center 1600
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Decided: December 6, 2007
__________

Before DONALD E. ADAMS, NANCY J. LINCK, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of reducing ketone and aldehyde impurities in a mixture containing alcohol,
which the Examiner has rejected on grounds of obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2007-3903
Application 10/361,349

BACKGROUND
“In many applications, such as for high performance chromatographs
with UV detection and pharmaceutical extraction, very high purity alcohols
are required” (Specification 1). The Specification discloses that
“[c]ommercially produced bulk alcohols typically contain various amounts
of several organic impurities such as acetone, methyl ethyl ketone, as well as
other ketone and aldehyde impurities resulting from the synthesis of the
alcohol” (Specification 2). The Specification states “[i]f these ketone and
aldehyde impurities are not removed, alcohols with a UV profile result
which are unacceptable for use as a solvent in UV sensitive applications”
(Specification 3).
Appellants state:
The invention provides a process for reducing the amount of
ultraviolet light absorbing ketone impurities and/or aldehyde
impurities in a fluid mixture containing an alcohol in
addition to ketone impurities and/or aldehyde impurities,
which comprises reacting a fluid mixture containing an
alcohol in addition to ketone impurities and/or aldehyde
impurities, with a sufficient amount of a reducing agent.

(Specification 3.)
STATEMENT OF THE CASE
The Claims
Claims 1-27 are on appeal. The claims have not been argued
separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).

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We will focus on claim 1, which is representative and reads as
follows:
1. A process for reducing the amount of ultraviolet light
absorbing ketone impurities and/or aldehyde impurities in a
fluid mixture containing an alcohol in addition to ketone
impurities and/or aldehyde impurities, which comprises:
a) first combining a fluid mixture containing an alcohol in
addition to ketone impurities and/or aldehyde impurities,
with a sufficient amount of a reducing agent powder, under
conditions wherein the reducing agent is preferentially more
reactive with the ketone impurities and/or aldehyde
impurities than the alcohol to thereby form a reaction
product; and then
b) introducing the combined fluid mixture with the reducing
agent of step (a) into a distillation column and distilling to
thereby recover a recovered alcohol product from the
reaction product.

The Examiner has rejected claims 1-27 under 35 U.S.C. § 103(a) based on:
W.P. Thompson & Co., GB 912,797 (issued Dec. 12, 1962) (hereafter “GB
912,797”).
The Issue
The Examiner contends that GB 912,797 teaches a process for alcohol
purification that reduces the levels of contaminants such as ketones and
aldehydes in the final alcohol composition (Answer 3). According to the
Examiner, GB 921,797 teaches addition of the reducing agent to the alcohol
prior to entry into the column (Answer 3). In addition, the Examiner found
that the use of the reducing agent resulted in some improvement in the purity
of the alcohol (Answer 3).
The Examiner noted that the addition of powder borohydride to crude
alcohol differed from GB 912,797, which added an aqueous solution of
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borohydride to the crude alcohol (Answer 5). In analyzing this difference,
the Examiner concluded that the ordinary artisan “would have had a
reasonable expectation that adding borohydride in powder form directly to
the crude ethanol in the invention [of] Union Carbide would have resulted in
the reduction of ultraviolet impurities” (Answer 5-6).
Appellants contend that GB 912,797 does not suggest the feature of
combining the alcohol fluid with the reducing agent powder and then
introducing the mixture into a distillation column (App. Br. 6). Appellants
also argue that GB 912,797 teaches away from introducing the reducing
agent at the claimed point of entry (App. Br. 7).
According to Appellants, there is a significant distinction between
methods using the claimed powder form of the reducing agent and the liquid
form used in GB 912,797 (App. Br. 8). Appellants argue that the claimed
process includes no water or base, and that water would produce undesirable
hydrogen gas (App. Br. 8). Appellants also discuss placement of the powder
inside the column for reaction (Reply Br. 2-3). Appellants also argue that
the five minute improvement seen by GB 912,797 may be due to impurities
or experimental error (App. Br. 10).
In view of these conflicting positions, we frame the issues before us as
follows:
(1) Would “first combining a fluid mixture containing an alcohol”
with a reducing agent and then “introducing the combined fluid mixture with
the reducing agent of step (a) into a distillation column” have been obvious
to a skilled artisan in view of GB 912,797?
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(2) Would substituting a reducing agent powder for the dissolved
reducing agent have been obvious to a skilled artisan in view of GB
912,797?
FINDINGS OF FACT
1. GB 912,797 teaches purification of alcohols by addition of the
reducing agent, sodium borohydride (GB 912,797 at 1, ll. 36-55).
2. In example 5, GB 912,797 teaches addition of the reducing
agent prior to addition of the alcohol (GB 912,797 at 3, ll. 69-80).
3. GB 912,797 teaches a five minute improvement in the
potassium permanganate time test for the procedure of example 5 (GB
912,797 at 3, ll. 77-80).
4. In example 1, GB 912,797 teaches addition of the reducing
agent into an Olderham column at the 55th tray, after which one more
distillation in the 56th tray occurred (GB 912,797 at 2, ll. 73-110).
5. GB 912,797 teaches an improvement from 28 minutes to 56-62
minutes in the potassium permanganate time test for the procedure of
example 1 (GB 912,797 at 2, ll. 96-110).
6. In example 2, GB 912,797 teaches addition of the reducing
agent into an Olderham column at the 50th tray, after which five more
distillations until the 55th tray occurred (GB 912,797 at 3, ll. 1-5).
7. GB 912,797 teaches an improvement from 30 minutes to 74
minutes in the potassium permanganate time test for the procedure of
example 2 (GB 912,797 at 3, ll. 8-21).
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8. GB 912,797 teaches preparing reducing agent solutions by
dissolving the reducing agent into an aqueous solution (GB 912,797, at 1, ll.
88-90, GB 912,797 at 2, ll. 1-3).
Discussion
Claim 1 is drawn to a method of first mixing an alcohol with ketone or
aldehyde impurities with a reducing agent powder and then putting this
mixture into a distillation column and distilling the mixture to obtain
purified alcohol.
In analyzing claim 1, our mandate is to give claims their broadest
reasonable interpretation.
Giving claims their broadest reasonable construction “serves
the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justified.”
Yamamoto, 740 F.2d at 1571; accord Hyatt, 211 F.3d at 1372;
In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“An essential
purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible,
during the administrative process.”).

In re American Academy of Science Tech Center, 367 F.3d 1359, 1364, (Fed.
Cir. 2004).
Claim 1 utilizes open claim language. The transitional term
“comprising” is “inclusive or open-ended and does not exclude additional,
unrecited elements or method steps.” Georgia-Pacific Corp. v. United
States Gypsum Co., 195 F.3d 1322, 1327, (Fed. Cir. 1999). Therefore,
applying the broadest reasonable interpretation to Appellants’ use of the
term “comprising” includes any method in which the reducing agent is
added to an alcohol prior to a further distillation step. The claim does not
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differentiate between starting materials that are outside the distillation
column and starting materials which are already in a distillation column.
Also, a broad reading of claim 1 does not differentiate between a method in
which the alcohol is directly added to the reducing agent powder and a
method that interpolates a step of dissolving the reducing agent powder prior
to addition of the alcohol.
Applying these interpretations to claim 1, there are two distinct ways
in which GB 912,797 teaches the steps of claim 1. First, GB 912,797
exemplifies mixing an alcohol mixture with a reducing agent and then
introduces the mixture into the distillation column (see FF 1-3). Example 5
demonstrates this order of addition (FF 2).
Appellants argue that the invention differs from Example 5 of GB
912,797:
However, we are not adding our reducing agent into the
column as described by this reference. Instead, we first add
a reducing agent, such as sodium borohydride, to an empty
distillation vessel (kettle) to which alcohol is then added. It
seems that the Examiner is leaping to the assumption that
the citation's addition of sodium borohydride to the aqueous
ethanol stream before it enters the column (by presumably
pumping it into the distillation column above the distillation
vessel) is analogous to the present invention's addition of
sodium borohydride powder into a distillation vessel, adding
the alcohol, and then vaporizing the alcohol up into the
column, thus leaving non-volatile sodium borohydride
behind. These two processes are clearly different, and
would be considered so by one skilled in the art.

(App. Br. 9.)
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There is no limitation in claim 1 which requires addition of the borohydride
powder to the distillation vessel followed by addition of the alcohol. We
decline to read a limitation into the claim that the reducing agent must be
added to an empty distillation vessel prior to addition of alcohol into the
claim. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“limitations are not to be read into the claims from the specification”).
Second, GB 912,797 discloses addition of the borohydride reducing
agent to the alcohol in the column, after some number of distillation steps
have been completed, but prior to one or more final distillation steps (see FF
4-7). Based on our above interpretation of claim 1 as permissive of starting
materials being already present in the distillation column, we conclude that
examples 1 and 2 of GB 912,797 disclose methods of distillation which fall
within the scope of claim 1 since the reducing agent is added to an alcohol
with impurities which is then subjected to distillation (see FF 4-7).
We reject Appellants’ argument that “obvious to try” is not the
standard for obviousness under 35 U.S.C. § 103. As we discussed above,
there is a specific reason to add the reducing agent to an alcohol with
impurities, and there is a direct teaching that this addition can occur prior to
further distillation (FF 1-7). Under KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727 (2007), when there is motivation
to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and
common sense. In that instance the fact that a combination
was obvious to try might show that it was obvious under
§ 103.
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KSR, 127 S. Ct. at 1742. This reasoning is applicable here. The “problem”
facing the skilled artisan is how to optimize an alcohol purification reaction
in a distillation column by addition of a reducing agent. In addition, the
skilled artisan would have had reason to try addition of the reducing agent at
a variety of points in the distillation since GB 912,797 suggests such
addition (see FF 1-7).
While GB 912,797 does not expressly teach that the sodium
borohydride used is in a powder form, we agree with the Examiner that
The powder borohydride even though not used in the
column is clearly suggested in the reference. In column 2 on
page 1 Union Carbide states, "The alkaline solution of alkali
metal borohydrides may be prepared by dissolving the alkali
metal borohydride in an aqueous solution.” This clearly
suggests that the alkali metal borohydride was in some solid
form. The most common solid form would be that of a
powder.

(Answer 5.)
The use of the term “dissolving” by GB 912,797 tells the skilled
artisan that the metal borohydride is in some solid form (see FF 8). The use
of common sense says that while solids may be dissolved, it is easier to
dissolve powders than solids because powders have greater surface area and
will dissolve more readily. See KSR v. Teleflex Inc., 127 S. Ct. at 1742-1743
(2007) (“Rigid preventative rules that deny factfinders recourse to common
sense, however, are neither necessary under our case law nor consistent with
it”).
We also reject Appellants’ argument that GB 912,797 teaches away
from the invention because the product includes quantities of water. Claim 1
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requires a “fluid mixture containing an alcohol.” This fluid mixture does not
exclude the presence of water. Like our appellate reviewing court, “[w]e
will not read into a reference a teaching away from a process where no such
language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellants argue that the 5 minute increase in the permanganate test
for example 5 is a minor change that may be due to experimental error or
oxidation of other impurities (see Reply Br. 4). Regarding the 5 minute
increase in example 5, GB 912,797 teaches that this change is an
“improvement” (see GB 912,797 at 3, ll. 80). Appellants present no
evidence that the change is not an improvement due to removal of
impurities. Instead, Appellants rely upon attorney argument.
In weighing the express statement of GB 912,797 that the 5 minute
increase is an improvement against the attorney arguments, we are guided by
our appellate reviewing court that “arguments of counsel cannot take the
place of evidence lacking in the record.” Estee Lauder Inc. v. L'Oreal, S.A.,
129 F.3d 588, 595 (Fed. Cir. 1997). We therefore reject Appellants’
argument that the improvement in the permanganate test shown in example 5
of GB 912,797 does not reflect a reduction in impurities (FF 3).
Based on the above, we conclude the Examiner has made a prima
facie case of obviousness under 35 U.S.C. § 103(a) (FF 1-8).
CONCLUSION
In summary, we affirm the rejection of claim 1 under § 103(a).
Pursuant to § 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims
2-27 under § 103(a) as these claims were not argued separately.
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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)(1)(iv)(2006).
AFFIRMED

Ssc

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