Ex Parte Yada et al

Board of Patent Appeals and Interferences

Jul 28, 2010

10853199 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHUHEI YADA, KENJI TAKASAKI, YASUSHI OGAWA,
and YOSHIRO SUZUKI
__________

Appeal 2009-012733
Application 10/853,199
Technology Center 1600
__________

Before ADRIENE LEPIANE HANLON, DEMETRA J. MILLS, and
KAREN M. HASTINGS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF CASE
The following claim is representative.
1. A process for producing (meth)acrylic acid which comprises
a (meth)acrylic acid-yielding reaction step in which a starting
compound for (meth)acrylic acid production is subjected to an oxidation
reaction,
a distillation step in which light matters are separated from the liquid
reaction mixture from the (meth)acrylic acid-yielding reaction step to obtain
crude (meth)acrylic acid,
a step in which by-products generated in the reaction step and
distillation step are pyrolyzed to recover (meth)acrylic acid, and
a step in which the (meth)acrylic acid recovered is supplied to the
distillation step, characterized in that
the temperature for the pyrolysis of the by-products is from 140 to
240°C and
the pressure for the pyrolysis is from 70 to 130 kPa.

Cited References
Sato et al. US 4,317,926 Mar. 2, 1982
Uemura et al. US 6,252,110 B1 Jun. 26, 2001

Grounds of Rejection
Claims 1-4 are rejected under 35 U.S.C. § 103(a), as being
unpatentable for obviousness over Uemura in view of Sato.

Discussion
ISSUE
The Examiner concludes that Uemura teaches the method for
recovering acrylic acid obtained from the gas-phase catalytic oxidation,
which is involved in the use of the pyrolyzing tank at temperatures of 120°C
to 220°C, whereas Sato et al expressly teaches the process for recovering the
acrylic acid from the by-product mixture produced by the catalytic vapor
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phase oxidation reaction of propylene or acrolein by using the
decomposition evaporator at temperatures of 120-220°C and at pressures of
20-500 mmHg (2.7-67 pKa). Both prior art processes are commonly
involved with the recovery process of acrylic acid using the pyrolyzing tank
under a similar reaction condition (i.e. temperature). Therefore, it would
have been obvious to the skilled artisan in the art to be motivated to
incorporate Sato's et al cracking pressure into the Uemura et al process in
order to achieve the optimum pressure for the pyrolysis because the skilled
artisan in the art would expect the incorporation of Sato's et al cracking
pressure knowledge into the Uemura's et al pyrolysis to be successful and
effective for the process as shown in the Sato et al process.
Appellants contend that Uemura fails to disclose the claimed pyrolysis
pressure, and the pressure disclosed by Sato is outside the claimed pressure
of 70-130kPa.
There is no dispute that it would have been obvious to one of ordinary
skill in the art to carry out the process of Uemura at a pressure within the
range disclosed in Sato. Rather, the issue in this appeal is whether the cited
references render obvious the claimed pyrolysis pressure.
FINDINGS OF FACT
1. The Examiner finds that
Uemura et al teaches a method for recovering acrylic acid
obtained from the gasphase catalytic oxidation in the following
step (see co1.3, lines 15-45):
(1) introducing said high boiling impurities containing
acrylic acid dimcr, acrylic acid and maleic acid into an acrylic
acid recovery column composed of a distillation column
equipped with a thin film vaporizer, wherein conducting
distillation under conditions of 10 to 100 mmHg and at the
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bottom temperature of the column of 60 to 120° C., distilling
acrylic acid off from the column top and recovering the same;
(2) introducing bottom liquid A from said thin film vaporizer
into a pyrolizing tank, whererat decomposing acrylic acid dimer
in said bottom liquid A at temperatures of 120 to 220° C.; and
thereafter (3) recirculating at least a part of bottom liquid B of
said pyrolyzing tank into said thin film vaporizer and/or the
distillation column, at a ratio of 1 to 20 times the high
boiling impurities containing acrylic acid dimer, acrylic acid
and maleic acid.

(Ans. 4.)
2. The Examiner finds that “the instant invention differs from the prior art in
that the claimed pressure for the pyrolysis is from 70 to 130 kpa.” (Id.)
3. The Examiner finds that
Sato et al teaches a process for recovering the acrylic
acid from the by-product mixture produced by the catalytic
vapor phase oxidation reaction of propylene or acrolein which
is concentrated in a bottom liquor of a final step rectification
tower for acrylic acid; furthermore, the by-product mixture is
thermally decomposed to efficiently recover them as acrylic
acid (see col. 1, lines 12-19).

(Ans. 5.)
4. The Examiner finds that, in Sato, “operation conditions of the
decomposition evaporator, [include] a heating temperature ranges 120-
220°C and the operating pressure ranges 20-500 mmHg (2.7-67 pKa) (see
from col. 5, line 66 to col. 6, line 2).” (Id.)
5. The Examiner finds that “[w]ith respect to the cracking pressure
difference between the prior art and the instant invention, the claimed ranges
and the prior art do not overlap but are very close enough that one skilled
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artisan in the art would have expected them to have the similar reaction
condition.” (Ans. 5.)

PRINCIPLES OF LAW
In order to determine whether a prima facie case of obviousness has
been established, we consider the factors set forth in Graham v. John Deere
Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; (3) the level of
ordinary skill in the relevant art; and (4) objective evidence of
nonobviousness, if present.
In Titanium Metals v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) it
was held that where the proportions of alloys are so close that prima facie
one skilled in the art would have expected to them to have the same
properties, they were considered to be obvious from known alloys.
“Although it is well settled that comparative test data showing an
unexpected result will rebut a prima facie case of obviousness, the
comparative testing must be between the claimed invention and the closest
prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA 1981).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ argument and adopt them as our own. We
provide the following additional comment.
Appellants contend that Uemura fails to disclose the claimed pyrolysis
pressure, and the pressure disclosed by Sato is outside the claimed pressure
of 70-130kPa. Appellants argue that comparative example 1 (pyrolysis
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pressure of 27 kPa) of the application demonstrates that at lower pressures as
in Sato the system is subject to apparatus clogging. (App. Br. 6.)
The Examiner contends that the Appellants have arbitrarily selected
27 kPa from the range of pressures disclosed in Sato. The Examiner points
out that Sato expressly discloses a pressure as high as 67 kPa. The Examiner
explains that the difference between the prior art pressure (67 kPa) and the
claimed pressure (70 kPa) is as little as 3 kPa which is so close that one of
ordinary skill in the art would have expected the two pressures to achieve the
same results. (Ans. 9-10.)
We conclude that the Examiner has established a prima facie case of
obviousness on the evidence before us which has not been rebutted by
Appellants with evidence.
Appellants argue that In re Sebek, 175 USPQ 93, 95 (CCPA 1972) is
controlling here and that the prior art discloses that the determination of
optimum values outside the disclosed range of Sato, according to Sebek,
may not be obvious. (Reply Br. 5.) We are not persuaded. The issue in this
case does not involve optimization. Rather, this case is similar to the
situation in Titanium Metals. That is, the pressure value of 70 kPa in the
claimed method is so close to 67 kPa pressure in the process of Sato, that
prima facie one skilled in the art would have expected the claimed process to
be obvious and produce the same results as the process suggested by the
prior art combination of Uemura and Sato. Appellants do not provide any
evidence to the contrary.
As noted by the Court in KSR, 550 U.S. 398, 418 (2007), “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
550 U.S. at 418. We conclude that the pressure value of Sato and that
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claimed are so close that one of ordinary skill in the art would have expected
that the pressure of Sato would have provided the same or substantially the
same results to the claimed pressure. We have no sufficient comparative
evidence showing an unexpected result.
For the reasons set forth above, the obviousness rejection is affirmed.
CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejection and
disclose a pyrolysis pressure so close as to be obvious.
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

cdc

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