Ex parte Vedage

Board of Patent Appeals and Interferences

Dec 21, 1998

08127659 (B.P.A.I. Dec. 21, 1998)

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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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GAMINI A. VEDAGE
______________
Appeal No. 95-2835
Application 08/127,6591
_______________
HEARD: December 7, 1998
_______________
Before JOHN D. SMITH, GARRIS and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 1 through 10. Claim 1 is illustrative of the claims on appeal:
1. In a process for the catalytic hydrogenation of meta-toluenediamines to their ring
hydrogenated counterparts by contacting a meta-toluenediamine with hydrogen in the presence of a
hydrogenation catalyst in the presence of a solvent, the improvement which comprises:
utilizing a catalyst comprising rhodium carried on a support as the
hydrogenation catalyst, and
utilizing a secondary C3-C10 alcohol as the solvent.

1 Application for patent filed September 27, 1993.
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The appealed claims as represented by claim 12 are drawn to improved processes for the
catalytic hydrogenation of a meta-toluenediamine or mixtures of meta- toluenediamine wherein the
improvement comprises the use of at least a catalyst comprising at least rhodium carried on a support
and of a secondary C3-C10 alcohol. According to appellant, the use of the supported rhodium
hydrogenation catalyst and a secondary C3-C10 alcohol per se enhances the reaction rate and yield at
moderate pressures and extends catalyst life and activity without the necessity to remove o-
toluenediamine impurities from the meta-toluenediamine feed (specification, e.g., page 3, lines 5-11).
The references relied on by the examiner are:
Cross 3,445,516 May 20, 1969
Chung et al. (Chung) 3,856,862 Dec. 24, 1974
Massie 3,914,307 Oct. 21, 1975
Whitman 5,214,212 May 25, 1993
The examiner has rejected appealed claims 1 through 10 under 35 U.S.C. § 103 as being
unpatentable over Whitman, and as being unpatentable over Whitman in view of Chung, Massie and
Cross. We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellant, we refer
to the examiner’s answer and to appellant’s brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the examiner that the claimed improved process encompassed by appealed claims 1 and
7 through 9 would have been obvious over the teachings of Whitman and over the combined teachings
of Whitman, Chung, Massie and Cross to one of ordinary skill in this art at the time the claimed
invention was made.

2 Appellant states in his brief (page 2) that “[c]laims 1-6 are to be considered as one group and
[c]laims 7-10 as a second group.” Appellant has separately argued appealed claims 1 and 7 through 9
in his brief. Thus, we decide this appeal based on appealed claims 1 and 7 through 9. 37 CFR §
1.192(c)(5) and (6)(1993).
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Counsel confirmed at oral hearing that appellant concedes that a prima facie case of
obviousness has been made out over the references applied by the examiner (see also brief, page
4). Accordingly, we have carefully reassessed the patentability of the claimed invention as a whole
based on the totality of the record, including all the evidence of obviousness and of nonobviousness,
giving due consideration to the weight of appellant’s arguments and to the objective evidence in
appellant’s specification and declaration3 under 37 CFR § 1.132. See generally In re Johnson, 747
F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Appellant’s arguments focus on the objective evidence in his specification and declaration
(specification Tables 4 and 54; declaration Tables A and B). We must agree with appellant that the
objective evidence establishes that unexpected results were obtained with processes wherein meta-
toluenediamines were hydrogenated utilizing a catalyst consisting of rhodium on a titanium dioxide
support or rhodium on an alumina support and a solvent consisting of isopropanol, 2-butanol or a
mixture of isopropanol and tetrahydrofuran, when compared to processes which utilized the same
supported catalysts and n-propanol, t-butanol, n-butanol and tetrahydrofuran. We also find, for the
reasons advanced by appellant (brief pages 6-7) that evidence in the declaration rebuts the examiner’s
contention that the comparisons do not constitute a side-by-side comparison because of differences in
temperature (answer, page 9).
Thus, the dispositive issue in this appeal is whether the evidence of nonobviousness is
commensurate in scope with the subject matter encompassed by the appealed claims and disclosed in
Whitman (answer, pages 8-9; brief, page 6). With respect to the scope of the appealed claims, we find
that appealed claims 1 and 7-9 are an “improvement” over prior art processes wherein a hydrogenation
catalyst is used in combination with a solvent to hydrogenate meta-toluenediamines to their ring
hydrogenated counterparts in view of the "Jepson" claim format.5 See In re Ehrreich, 590 F.2d 902,
904, 200 USPQ 504, 510 (CCPA 1979). Indeed, appellant’s improvement “comprises” at least using

3 The Vedage declaration was filed on September 16, 1994 (Paper No. 7).
4 Specification Tables 4 and 5 are found in specification Examples 4 and 5. We find that specification
Examples 1-3 utilize tetrahydrofuran as the solvent and thus this subject matter does not fall within the
appealed claims.
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a catalyst “comprising” at least rhodium carried on a support and a secondary C3-C10 alcohol in the
hydrogenation process and appellant does disclose that the catalyst can contain ‘[o]ther metals
optionally carried on the same or a separate support” and that other solvents can be present
(specification, pages 3-4). Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35
USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising - meaning
containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795,
802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is propylene, any other
monomer may be present, because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”). We find that appealed claims 1 and 7-9 do not contain any limitations on the amount of
the supported rhodium hydrogenation catalyst or any other hydrogenation catalyst or on the secondary
alcohol or any other solvent which must or may be present.6 Indeed, while appellant discloses that it is
the rhodium catalyst system and the secondary alcohols that provide respective advantages to the
claimed process (specification, e.g., page 2, lines 5-9), the term “comprises” would permit the inclusion
of other metals in the rhodium catalyst system as well as additional catalysts and other solvents in
amounts which would adversely affect the basic and novel characteristics of the claimed composition.
Compare In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976); In re
Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA 1963); Ex parte Davis, 80
USPQ 448, 450 (Bd. App. 1948).
Whitman teaches the catalytic hydrogenation of, inter alia, meta-toluenediamines (e.g., col. 6,
lines 66-67) with a supported hydrogenation catalyst, which can contain rhodium separately or mixed
with other metals and can be used with other supported hydrogenation catalysts, in the presence of a
solvent, which can be isopropanol and can be mixed with other solvents (col. 7, lines 7-40), wherein the
hydrogenation is conducted in the presence of at least one salt of a transition or lanthanide metal as a

5 See 37 CFR § 1.75(e)(1982); MPEP § 608.01(m)(7th ed., July 1998; 600-64).
6 We will not read into the appealed claims any limitations on the amounts of secondary alcohols or
other solvents or the amounts of any hydrogenation catalysts which can be used in the hydrogenation
processes as disclosed in the specification (pages 3-4) as such limitations are not expressly set forth in
the claims. In re Priest, 582 F.2d 33, 38, 199 USPQ 11, 15 (CCPA 1978), citing In re Prater, 415
F.2d 1393, 1405, 162 USPQ 541, 551 (CCPA 1969).
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promoter. Whitman discloses that the transition or lanthanide metal salt promoted catalytic
hydrogenation process results in an increase in reaction rate, a decrease in the induction period and a
decrease in the amount of higher boiler by-products (e.g., col. 5, line 53, to col. 6, line 5, and col. 8,
lines 7-10). Indeed, one of ordinary skill in this art would have known from these teachings of Whitman
that the elimination of the transition or lanthanide metal promoter from the otherwise old process (e.g.,
col. 1, line 12, to col. 5, line 50) would result, inter alia, in a decreased reaction rate and an increased
in the induction period from the improvement in these parameters taught in the reference.
It is well settled that objective evidence of non-obviousness must be commensurate in scope
with the claims. In re Kulling, 897 F.2d 1147, 1149-50, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990);
In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778-79 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035-36, 206 USPQ 289, 295-96 (CCPA 1980); In re Greenfield, 571 F.2d 1185,
1189, 197 USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356,
358 (CCPA 1972); In re Tiffin, 488 F.2d 791, 792, 171 USPQ 294 (CCPA 1971). As discussed
above, we find that the objective evidence in appellant’s specification and declaration is directed to
comparisons of the claimed catalytic hydrogenation processes with known catalytic hydrogenation
processes which do not contain transition or lanthanide metal salt promoters as disclosed in Whitman,
wherein the compared processes essentially differ in the alcohol solvent. While these comparisons
involve supported rhodium catalysts in the presence of a secondary alcohol, and thus, as counsel
pointed out at oral hearing, the evidence meets the minimum requirements of the appealed claims, we
find that the comparisons do not provide objective evidence commensurate in scope with the appealed
claims for two reasons. First, as we have discussed above, the appealed claims do not contain
limitations which would (1) exclude hydrogenation catalysts that contain metals in addition to rhodium on
the same support or additional catalysts and the presence of other solvents, both in amounts which
would adversely affect the basic and novel characteristics of the claimed composition and/or (2) exclude
transition or lanthanide metal salt promoters, all of which are taught in Whitman to improve the reaction
rate and yield, and none of which is shown in the objective evidence in appellant’s specification and
declaration. Kulling, supra; In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808-09 (CCPA
1979). And, second, we are of the opinion that the objective evidence in appellant’s specification and
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declaration would not provide the basis for one of ordinary skill in this art to reasonably predict the
performance of a hydrogenation process for meta-toluenediamines wherein the process comprises the
use of (1) hydrogenation catalysts that contain metals in addition to rhodium on the same support or
additional catalysts and the presence of other solvents, both in amounts which would adversely affect
the basic and novel characteristics of the claimed composition and/or (2) transition or lanthanide metal
salt promoters, all of which are taught in Whitman to increase the reaction rate and yield, and none of
which is shown in the objective evidence in appellant’s specification and declaration. Compare
Clemens, supra; In re Boesch, 617 F.2d 272, 277, 205 USPQ 215, 219-20 (CCPA 1980); In re
Kollman, 595 F.2d 48, 56, 201 USPQ 193, 199 (CCPA 1979); Lindner, supra; In re Landgraf,
436 F.2d 1046, 1050, 168 USPQ 595, 597 (CCPA 1971). Appellant submits that “the catalysts and
solvents used in the examples of the instant Specification are representative of catalyst supports and
alcohols used in the prior art for the hydrogenation of meta-toluenediamines” (brief, page 6). However,
this argument is not supported by factual evidence, as we have demonstrated above, and thus is
insufficient to establish that the unexpected results obtained with the processes in the specification
Examples and the declaration extends to the full scope of the appealed claims. Lindner, supra. Thus,
the objective evidence in appellant’s specification and declaration leads to the conclusion that appealed
claims 1 and 7 through 9 read on both obvious and nonobvious subject matter and thus are too broad in
the sense of § 103. Tiffin, supra.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the teachings of Whitman and in the combined
teachings of Whitman, Chung, Massie and Cross with appellant’s countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claims 1 through 10 would have been obvious as a matter of law under 35 U.S.C. § 103.
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The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
AFFIRMED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-2835
Application 08/127,659
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Patent Assistant
Air Products and Chemicals, Inc.
7201 Hamilton Blvd.
Allentown, PA 18195-1501