Ex Parte Vaporciyan

Patent Trial and Appeal Board

Jan 30, 2013

12175497 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/175,497 07/18/2008 Garo Garbis VAPORCIYAN TS1823 (US) 1710
23632 7590 01/31/2013
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
01/31/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARO GARBIS VAPORCIYAN
____________________

Appeal 2011-011947
Application 12/175,497
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, RICHARD TORCZON, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011947
Application 12/175,497

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Garo Garbis Vaporciyan (“Appellant”) seeks relief under 35 U.S.C.
§ 134(a) from the Examiner’s final rejection of Claims 1-3 and 5.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The appealed claims are directed to a method for storing and/or
transporting bisphenolacetone (BPA) and subsequently producing aromatic
polycarbonate. Claim 1, set forth below, is illustrative of the subject matter
on appeal:
1. A method for producing aromatic polycarbonate,
comprising:
(1) transporting a liquid mixture of acetone and
bisphenolacetone to a polycarbonate production plant;
(2) separating the bisphenolacetone from the acetone;
(3) reacting the bisphenolacetone with
diphenylcarbonate to produce polycarbonate.

Appellant has argued the patentability of Claims 1-3 together, and
argued that Claim 5 is patentable for the same reasons as Claim 1. Claims 2,
3, and 5 therefore stand or fall together with Claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii); Hyatt v. Dudas, 551 F.3d 1307, 1311-14 (Fed. Cir. 2008).

The Examiner relies upon the following evidence of unpatentability:
Miyamoto US 6,750,314 B2 Jun. 15, 2004
Vaporciyan US 2005/0090638 A1 Apr. 28, 2005

1 Application Ser. No. 12/175,497, entitled Method For Storage and/or
Transport of Bisphenolacetone and Method For Producing Aromatic
Polycarbonate, filed July 18, 2008, claiming priority to EP 07112681.7 filed
July 18, 2007. The real party in interest is listed as Shell Oil Company.
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Application 12/175,497

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The Rejected Claims
Claims 1-3 and 5 stand rejected under 35 U.S.C. §103(a) as obvious
over Miyamoto in view of Vaporciyan.

The Issue Presented
The issue before us on appeal is whether the prior art in combination
teaches or suggests “transporting a liquid mixture of acetone and
bisphenolacetone.”

ANALYSIS
Aromatic polycarbonate, also referred to simply as polycarbonate, is a
clear, hard polymer useful in a wide range of applications. Polycarbonate is
most commonly produced by reacting bisphenolacetone (BPA) with
diphenylcarbonate, however the use of BPA does have several drawbacks.
For instance, BPA is preferably stored and transported in its molten state, but
the temperature required (greater than 160ºC) is difficult to maintain during
transportation and may lead to the degradation of the BPA and discoloration
of the resulting polycarbonate. Spec. 2, ll. 5-17. 2
Appellant proposes to address this problem by using acetone as a
solvent to lower the melting point of BPA during storage and transportation.
When dissolved in acetone, BPA can be transported at temperatures ranging
from 15 to 90ºC, reducing the risk of degradation of the BPA. Id. 8, ll. 7-15.
Additionally, as acetone is used as one of the components in the production
of BPA, Appellant notes the use of a raw material as a solvent gives the

2 We refer to the instant Vaporciyan specification as “Spec.”
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Application 12/175,497

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added advantage of enabling further production of BPA at the site where
polycarbonate is being produced. Id. 8 ll. 15-33.
The Examiner rejected the appealed claims as obvious over a
combination of two prior art references, each of which disclose a method for
transporting raw components of a polycarbonate production process and then
subsequently producing polycarbonate. We address each reference
separately below.
Miyamoto discloses a process for producing polycarbonate from BPA
and a carbonate material such as diphenylcarbonate. Miyamoto col. 2, ll.
32-45. BPA is first produced by reacting phenol with acetone, resulting in a
BPA/phenol composition. Id. The BPA/phenol solution is then held in a
molten state until the BPA can be reacted with a carbonate to produce
polycarbonate. Id. Miyamoto notes that the solution of BPA in phenol is
advantageous because the phenol lowers the melting point of BPA to about
120ºC. Id. ll. 19-26.
Miyamoto therefore discloses the process of the Claim 1, with the sole
difference being that Miyamoto uses one of the reagents used to produce
BPA (phenol) as the solvent whereas the present process uses the other
reagent used to produce BPA (acetone) as the solvent. As Appellant notes,
using acetone is advantageous over Miyamoto’s phenol because it allows the
melting point of BPA to be lowered significantly. Spec. 13 ll. 6-13.
Vaporciyan3 also discloses a method of producing polycarbonate.
Rather than transporting BPA in acetone as in the instant claims, Vaporciyan
discloses dissolving the diphenylcarbonate in acetone, transporting the

3 The prior art reference cited by the Examiner shares the same inventor as
the present application. For clarity, we will use “Vaporciyan” to refer to the
reference, and “Appellant” to refer to the instant application.
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Application 12/175,497

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mixture to a production step, separating the acetone from the
diphenylcarbonate, and then producing polycarbonate by reacting BPA with
the diphenylcarbonate. Vaporciyan ¶¶ 0015-0021. Vaporciyan notes that
dissolving diphenylcarbonate in acetone allows the diphenylcarbonate to be
stored and transported in molten form, but at a much lower temperature (15-
70ºC) than diphenylcarbonate alone. Id. ¶ 0024.
The Vaporciyan reference therefore discloses the process of the
Claim 1, with the sole difference being that Vaporciyan uses acetone to
dissolve and lower the melting temperature of one of the ingredients of
polycarbonate (diphenylcarbonate) while Appellant claims using acetone to
dissolve and lower the melting temperature of the other ingredient of
polycarbonate (BPA).
In making an obviousness rejection over the combination of
Miyamoto and Vaporciyan, the Examiner reasoned that it would have been
obvious to use the solvent of Vaporciyan (acetone) in place of the solvent of
Miyamoto (phenol). Ans. 4. 4 As the Examiner noted, Vaporciyan teaches
that acetone is known to lower the melt viscosity and glass transition
temperature of BPA. Id. Since this is the same purpose for which
Miyamoto uses phenol, according to the Examiner it would have been
obvious to substitute acetone for the phenol of Miyamoto. Id.
Appellant responded to the rejection by claiming that the Examiner
took the disclosure of Vaporciyan out of context. According to Appellant,
Vaporciyan discloses that a small amount of acetone present when BPA is
reacted with diphenylcarbonate lowers melt temperature of the

4 We refer to the Appeal Brief filed March 2, 2011 (“App. Br.”) and the
Examiner’s Answer mailed April 22, 2011 (“Ans.”).
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diphenylcarbonate. App. Br. 3. “At these low levels of acetone,” Appellant
argues, “it cannot really be considered a solvent.” Id. Appellant argues that
Vaporciyan is distinguishable from the present invention, wherein acetone is
used as a solvent prior to the BPA/diphenylcarbonate reaction. Id.
Based on our review of the reference, the teaching of Vaporciyan
cannot be distinguished on these grounds. First, the reference does not limit
the effect of the acetone on melting point to only the diphenylcarbonate, as
Appellant seems to imply. Vaporciyan broadly states that acetone reduces
“the melt viscosity and the glass transition temperature of diphenyl
carbonate, bisphenolacetone, and the formed polycarbonate.” Vaporciyan
¶ 0051 (emphasis added).
Second, we are not convinced by Appellant’s argument that the small
amount of acetone present in the BPA/diphenylcarbonate reaction means
that “it cannot really be considered a solvent.” App. Br. 3. The Vaporciyan
reference – which has the same inventor as the present application –
expressly refers to the acetone as a “solvent and/or plasticizer.” Vaporciyan
¶ 0051. Appellant cannot distance himself from his own words so easily.
Finally, as the Examiner points out, the Vaporciyan reference was
cited as teaching a particular property of acetone: namely, its ability to lower
the melting point of BPA. “This property would be universal and a person
having ordinary skill in the art at the time of invention would have a
reasonable expectation that acetone will lower melt processing temperature
of bisphenolacetone. This is the effect desired in Miyamoto et al.” Ans. 6.
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CONCLUSION
For the foregoing reasons, we find that the prior art in combination
teaches or suggests all elements of the appealed claims. We therefore affirm
the rejection of Claims 1-3 and 5 as obvious under 35 U.S.C. § 103(a).
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

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