Ex Parte Telschow

Board of Patent Appeals and Interferences

May 2, 2011

10534156 (B.P.A.I. May. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFREY EARL TELSCHOW
__________

Appeal 2010-012115
Application 10/534,156
Technology Center 1600
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for removal of long-chain aliphatic amide impurities from a solution. The
Examiner rejected the claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Statement of the Case
The Claims
Claims 1-20 are on appeal. Independent claim 1 is representative and
reads as follows:

Appeal 2010-012115
Application 10/534,156

2
1. A process for the removal of long-chain
aliphatic amide impurities from a solution of said
amides and fatty acid-derived nitriles which
comprises washing said solution with an amount of
a strong acid effective to remove the amide as a
salt in the acid layer, separating said acid layer
from said solution leaving an acid-treated fatty
acid-derived nitrile substantially free from said
amide impurities.

The issues
1

A. The Examiner rejected claims 1-7, 10-12, and 13-19 under 35 U.S.C.
§ 102(b) as anticipated by Frank
2
(Ans. 3-4).
B. The Examiner rejected claims 8, 9, and 20 under 35 U.S.C. § 103(a)
as obvious over Frank (Ans. 4-5).
A. 35 U.S.C. § 102(b) over Frank
The Examiner finds that Frank teaches “removal of long chain
aliphatic amides from a solution of the amide and nitrile. The amide is
protonated by acid addition. Amide ions are transferred to the acid phase.
The nitrile having a reduced content of impurities (i.e. amides) is separated
from the acid reaction mixture” (Ans. 3). The Examiner finds that Frank
teaches that the “purified nitrile is re-slurried with fresh clay (i.e. adsorbent).
See columns 3-5 for a general description; examples I and II in columns 6-8
for specific embodiments” (Ans. 4).

1
The Examiner withdrew the rejection under 35 U.S.C. § 112,
second paragraph (see Ans. 3).
2
Frank et al., US 4,575,434, issued Mar. 11, 1986.
Appeal 2010-012115
Application 10/534,156

3
Appellant contends that “Frank does not disclose the formation of
an acid layer, or the subsequent separation of same from the nitrile”
(App. Br. 10).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Frank teaches a step of “separating
said acid layer from said solution leaving an acid-treated fatty acid-derived
nitrile substantially free from said amide impurities”?
Findings of Fact
1. The Specification teaches that “[a]fter the nitrile is made, 0.5 to
3 wt% of dilute H2SO4 (approximately 50-70%), with or without 0.5 to 5%
of an optional filter aid, is stirred in at room temperature and atmospheric
pressure for a time effective for the removal of the amide impurities.” (Spec.
7, ll. 4-6).
2. The Specification teaches that the “optional filter aid may be
such things as clay, silica or diatomaceous earth. Typically, after about 30
minutes, the amide impurity is removed into the lower, dark acid layer, or is
adsorbed onto the filter aid, probably as a salt” (Spec. 7, ll. 7-9).
3. The Specification teaches that a “key step in the process of the
present invention is the separation of the nitriles having a reduced content of
impurities and improved color from the reaction mixture. . . . one may add
an adsorbent along with the acid treatment and filter out the adsorbent/amide
salt/excess acid by means of one or more filter assemblies . . . either pressure
or vacuum filtration may be employed with any suitable filtering medium”
(Spec. 7, l. 21 to 8, l. 2).
Appeal 2010-012115
Application 10/534,156

4
4. Frank teaches a “process for the removal of long-chain aliphatic
amides from a solution of said amides and fatty acid derived nitriles
comprising forming a reaction mixture comprising said solution, a layered
mineral comprising an aluminum silicate having exchangeable alkaline or
alkaline earth cations on the surfaces of said layers and an acid having an
acid strength sufficient to protonate said amides” (Frank, col. 14, ll. 20-28).
5. Frank teaches that the “reaction mixture will be hetrogeneous
with nitrile, acid and solid phases” (Frank, col. 3, ll. 24-25).
6. Frank teaches that the
reaction of the present invention is best carried out by means
of a slurry of the mineral and acid in the nitrile-amide
solution. Bentonite clay is an excellent source of the mineral
and readily disintegrates in a liquid medium to the finely
divided particles conducive to slurry formation. The acid,
such as sulfuric, should be added to the slurry in the form of
fine droplets so as to avoid charring and provide a good
initial dispersion.

(Frank, col. 4, ll. 46-53).
7. Frank teaches “separation of the nitriles having a reduced
content of impurities from the reaction mixture. We believe this to be best
accomplished by means of one or more vacuum filter assemblies” (Frank,
col. 4, ll. 57-60).
8. Frank teaches that the “selection of acid may now be in terms of
those acids which achieve a desired degree of amide removal” (Frank, col.
13, ll. 4-5).

Appeal 2010-012115
Application 10/534,156

5
Principles of Law
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1349
(Fed. Cir. 2002). “It matters not that those of ordinary skill heretofore may
not have recognized these inherent characteristics.” Id. at 1350. See, e.g.,
MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365
(Fed.Cir.1999) (“Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.”)
Analysis
The Specification teaches that removal of impurities is performed by
addition of sulfuric acid and an optional filter aid such as clay, where “after
about 30 minutes, the amide impurity is removed into the lower, dark acid
layer, or is adsorbed onto the filter aid, probably as a salt” (Spec. 7, ll. 7-9;
FF 2). The Specification expressly recognizes that separation may be
performed two ways, the second of which is that “one may add an adsorbent
along with the acid treatment and filter out the adsorbent/amide salt/excess
acid by means of one or more filter assemblies . . . either pressure or vacuum
filtration may be employed with any suitable filtering medium” (Spec. 7, l.
21 to 8, l. 2; FF 3).
Frank teaches that the
reaction of the present invention is best carried out by means
of a slurry of the mineral and acid in the nitrile-amide
solution. Bentonite clay is an excellent source of the mineral
and readily disintegrates in a liquid medium to the finely
divided particles conducive to slurry formation. The acid,
Appeal 2010-012115
Application 10/534,156

6
such as sulfuric, should be added to the slurry in the form of
fine droplets so as to avoid charring and provide a good
initial dispersion.

(Frank, col. 4, ll. 46-53; FF 6). Frank teaches that the presence of an “acid
phase” (FF 5). Frank teaches “separation of the nitriles having a reduced
content of impurities from the reaction mixture. We believe this to be best
accomplished by means of one or more vacuum filter assemblies” (Frank,
col. 4, ll. 57-60; FF 7).
In our opinion, when the claims are read in light of the Specification,
Frank performs the identical method steps as those claimed. Frank adds
sulfuric acid, the acid preferred in instant claim 7, to the solution of amides
and fatty acid-derived nitriles (FF 4-5). Frank further separates the amides
from the nitriles using a filter aid, specifically clay (FF 6), which is the
identical step performed by instant claim 12 as well as a method disclosed in
the Specification (FF 2). Frank further teaches that the filtering may be
performed with vacuum filtration (FF 7) which is consistent with the
methods disclosed by the Specification (FF 3).
Appellant contends that “Frank does not disclose the formation of
an acid layer, or the subsequent separation of same from the nitrile”
(App. Br. 10).
We are not persuaded. While Frank does not expressly teach that the
addition of the sulfuric acid and clay to the mixture results in the formation
of an “acid layer”, the formation of this layer is reasonably found to be an
inherent result of the addition of the sulfuric acid and clay (see FF 2). The
absence of an express teaching is not the same as the absence of the step.
Appellant has not provided any evidence that Frank’s process does not result
Appeal 2010-012115
Application 10/534,156

7
in the formation of an acid layer, and given the virtual identical nature of the
steps disclosed by Frank and the steps found in the Specification, it is
reasonable to find that the separation of the acid phase is a necessary result
of the operation of the steps disclosed by Frank and the Specification (FF 1-
7).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Frank
teaches a step of “separating said acid layer from said solution leaving an
acid-treated fatty acid-derived nitrile substantially free from said amide
impurities”.
B. 35 U.S.C. § 102(b) over Frank
Appellant correctly notes that “the examiner still has the initial
burden of supporting the rejection of claims 8, 9 and 20 under section 103.
Merely stating that claims 1 and 15 remain rejected under section 102 is not
enough to support the present rejection under section 103” (App. Br. 11-12).
However, we are not persuaded since the Examiner has met this
burden. The Examiner, using similar language in the initial non-final
rejection mailed June 9, 2008, and in the Answer, provides a specific reason
why the different strengths of sulfuric acid and conditions would have been
obvious (see Ans. 4-5). The Examiner finds that the ordinary artisan “would
be motivated, by the implicit disclosure in the reference, to practice the
process with different acid strengths with [a] reasonable expectation of
success” (Ans. 5). The Examiner then cites MPEP 2144.05 II A regarding
routine experimentation (see Ans. 5).
Appeal 2010-012115
Application 10/534,156

8
We agree with the Examiner that in the absence of evidence to the
contrary, modification of the amount of sulfuric acid or other conditions
used in Frank would be routinely optimizable variables. Frank specifically
teaches that the “selection of acid may now be in terms of those acids which
achieve a desired degree of amide removal” (Frank, col. 13, ll. 4-5; FF 8).
See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is not inventive to
discover the optimum or workable ranges by routine experimentation.”)
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(b) as anticipated by Frank. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-7, 10-12, and
13-19, as these claims were not argued separately.
We affirm the rejection of claims 8, 9, and 20 under 35 U.S.C. §
103(a) as obvious over Frank.

Appeal 2010-012115
Application 10/534,156

9
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).

AFFIRMED

alw