Ex Parte Wolfert et al

Board of Patent Appeals and Interferences

May 7, 2010

10523919 (B.P.A.I. May. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS WOLFERT, CHRISTIAN MULLER,
ECKHARD STROFER, MARKUS WEBER, JOACHIM PFEFFINGER
and CARSTEN KNOSCHE
____________

Appeal 2009-0086511
Application 10/523,919
Technology Center 1600
____________

Decided: May 7, 2010
____________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 by the Patent
Applicants from the Patent Examiner’s rejection of claims 1-6 as obvious.

1 Heard on April 14, 2010.
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The Board’s jurisdiction for this appeal is under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
The claimed subject matter is to a process for preparing an aromatic
diisocyanate involving reacting a phosgene with a diamine in the gas phase
at specifically recited temperature and pressure conditions. Claims 1-6 are
pending and stand rejected under 35 U.S.C. § 103(a) as obvious in view of
Ohlinger, U.S. Pat. No. 4,581,174, issued Apr. 8, 1986 (Ans. 3).
Claim 1, the only independent claim on appeal, reads as follows:
A process for preparing an aromatic diisocyanate by
reacting a phosgene with a diamine in the gas phase, wherein
the reaction is carried out in a reaction zone in which the
pressure is more than 3 bar and less than 20 bar and the
temperature in the reaction zone is from more than 200°C to
less than 600°C.

STATEMENT OF THE ISSUES
Was the scope of claim 1 properly construed to require that only the
phosgene be reacted in the gas phase?
Whether Ohlinger would have reasonably suggested to persons of
ordinary skill in the art the recited reaction conditions of a pressure “more
than 3 bar and less than 20 bar” and a temperature “from more than 200°C to
less than 600°C”?
PRINCIPLES OF LAW
During patent examination, claims “‘are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Bond, 910 F.2d 831,
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833 (Fed. Cir. 1990).” In re American Academy Of Science Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
“During [patent] examination, the examiner bears the initial burden of
establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005).
In making an obviousness determination, “there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

FINDINGS OF FACT
Ohlinger patent (U.S. Patent No. 4,581,174, Apr. 8, 1986)
1. Ohlinger teaches that the “manufacture of isocyanates from primary
amines and phosgene has been disclosed. Depending on the nature of the
amines, the reaction is carried out either in the gas phase or in the liquid
phase” (Ohlinger, col. 1, ll. 11-14).
2. In the “SUMMARY OF THE INVENTION,” Ohlinger describes the
invention as:
a process for the continuous preparation of organic isocyanates
by reacting organic amines with phosgene in the presence of
organic solvents under pressure at elevated temperature,
whereby the reaction mixture is partially recycled in a loop . . ..
(Id. at col. 2, ll. 52-57.)
3. “Gaseous and/or, preferably, liquid phosgene is used as the other initial
component.” (Id. at col. 4, ll. 11-12.)
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4. “The reaction is advantageously carried out at from 100º to 220 ºC.,
preferably from 120º C. to 180º C., and at pressures of from 5 to 100 bars,
preferably from 15 to 50 bars.” (Id. at col. 4, ll. 46-49.)

Specification
5. “In the process of the present invention, the reaction of phosgene with
diamine occurs in the gas phase. For the purposes of the present invention,
the term ‘reaction in the gas’ phase means that the feed streams react with
one another in the gaseous state.” (Spec. 4: 28-32.)

CLAIM INTERPRETATION
Claim 1 is to a “process for preparing an aromatic diisocyanate by
reacting a phosgene with a diamine in the gas phase.” The Examiner
interpreted “in the gas phase” to read on processes in which “only the
diamine” is in a gas phase (Ans. 4). Appellants challenge the Examiner’s
interpretation.
During patent examination, the words in a claim are given their
broadest reasonable meaning as they would be understood by one of
ordinary skill in the art having read the Specification. Accordingly, to
properly interpret the scope of the claim, we must first turn to the
Specification for guidance. In this case, the Specification defines “‘reaction
in the gas’” phase to mean that the “feed streams” of the phosgene and
diamine components “react with one another in the gaseous state.” (FF5.)
Therefore, the claimed process comprising “reacting a phosgene with a
diamine in the gas phase” would be interpreted by the ordinary skilled to
mean that both the phosgene and diamine react in a gaseous phase, and both
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are in a gas phase. The Examiner improperly interpreted the scope of claim
1 to require that only the diamine is in the gas phase.

ANALYSIS
The process of claim 1 for making aromatic diisocyanates involves
reacting a phosgene and diamine, both in gaseous states, “in a reaction zone
in which the pressure is more than 3 bar and less than 20 bar and the
temperature in the reaction zone is from more than 200°C to less than
600°C.” The Examiner rejected the claim based on Ohlinger’s description
of a process for making isocyanates by reacting amines with phosgene at
temperature and pressure conditions which overlapped with the claimed
values (Ans. 3). The Examiner acknowledged that Ohlinger did not
“explicitly state the temperature in the reaction zone,” but concluded that it
would have been obvious to determine those conditions and optimize them
“with the reasonable expectation that the yields would be increased, the
energy consumption would be lowered and to facilitate operations overall.”
(Id.) The Examiner also determined that it was “prima facie obvious to
perform the reaction in the gas phase, as well as in the liquid phase,
particularly since the prior art also teaches that the reaction can be carried
out in either the gas phase or liquid phase . . . (column 1, line 13-14). (Id. at
4; FF1.)
The Examiner has the burden of establishing prima facie obviousness
by providing evidence that the prior art reasonably discloses or suggests all
the limitations of the claimed invention. This burden was not met.
First, the scope of the claim was not properly interpreted. Claim 1
was interpreted to require that only the diamine react in the gas phase. This
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was an unreasonable interpretation of claim 1 in light of the Specification.
Rather, the claimed process comprising “reacting a phosgene with a diamine
in the gas phase” is properly interpreted to mean that both the phosgene and
diamine react in a gaseous phase. Consequently, the full scope of the claim
was not compared to the prior art.
Secondly, there is insufficient evidence to establish that the working
conditions described by Ohlinger for a process in which only one component
was in the gas state, would have been reasonably expected to work for a
process in which both the phosgene and diamine were in the gas phase.
Ohlinger’s process occurred with solvent in the liquid phase (FF2; App. Br.
3-4), even when one component was introduced in the gas phase (FF3).
While Ohlinger teaches that the reaction can be conducted in either the gas
or liquid phase (FF1), the temperature and pressure conditions disclosed by
Ohlinger were for liquid phase reactions (FF2-4; App. Br. 3-4), not gas
phase as required by claim. 1. Reasoning has not been presented as to why
person of ordinary skill in the art, based on Ohlinger’s teachings of a
reaction in liquid phase, would have utilized those conditions to “optimize”
for a reaction accomplished in completely different state of matter.
For the foregoing reasons, we reverse the rejection of claim 1 and
dependent claims 2-6.

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REVERSED

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OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314