Ex Parte Zechlin et al

Board of Patent Appeals and Interferences

Jan 13, 2011

11448265 (B.P.A.I. Jan. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOACHIM ZECHLIN, BERND PENNEMANN,
FRIEDHELM STEFFENS, and WENBIN JI
____________

Appeal 2010-011164
Application 11/448,265
Technology Center 1600
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Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1

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.
Appeal 2010-001164
Application 11/448,265

2
This is a decision on the appeal under 35 U.S.C. § 134 by the Patent
Applicants from the Patent Examiner’s rejections of claims 1-8. The
Board’s jurisdiction for this appeal is under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Claims 1-8 stand rejected by the Examiner under 35 U.S.C. § 103(a)
as obvious in view of Forlin2 and Grun3 (Answer 4). Claim 1 is
representative and reads as follows:
A process for the production of toluene diisocyanate
comprising:
a) hydrogenating dinitrotoluene in the presence of a catalyst, to
yield a crude toluenediamine mixture.
b) purifying the crude toluenediamine mixture, to yield a
toluenediamine which contains a total of less than 0.1% by
weight of cyclic ketones, based on 100% by weight of the
toluenediamine,
and
c) phosgenating the toluenediamine which contains a total of
less than 0.1% by weight of cyclic ketones, based on 100% by
weight of the toluenediamine, to yield the toluene diisocyanate.

ISSUE
Claim 1 is directed to a process for producing toluene diisocyanate
comprising three steps: a) hydrogenating dinitrotoluene to yield a crude
toluenediamine mixture; b) purifying the crude toluenediamine mixture “to
yield a toluenediamine which contains a total of less than 0.1% by weight of
cyclic ketones”; and c) phosgenating the toluenediamine to yield toluene

2 U.S. Patent Application No. 2004/0092773 (filed June 29, 2001)
(published May 13, 2004).
3 U.S. Patent Application No. 2004/0118672 (filed Oct. 16, 2003) (published
June 24, 2004).
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Application 11/448,265

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diisocyanate. The issue in this appeal is whether the Examiner shifted the
burden to Appellants to show that the prior art process of Forlin did not
produce a toluenediamine with “less than 0.1% by weight of cyclic ketones,”
and if so, whether Appellants provided sufficient reason or evidence to rebut
the Examiner’s determination.

LEGAL PRINCIPLES
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
See In re Ludtke, [441 F.2d 660 (CCPA 1971)]. Whether the
rejection is based on “inherency” under 35 U.S.C. § 102, on
“prima facie obviousness” under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products. See In re Brown, 459
F.2d 531. . . ([CCPA]1972).
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
The applicant has the burden of coming forward with evidence
in rebuttal, when the prior art includes a method that appears,
on its face, to be capable of producing the claimed composition.
This burden may be met by presenting sufficient reason or
authority or evidence, on the facts of the case, to show that the
prior art method would not produce or would not be expected to
produce the claimed subject matter.
In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005).

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FINDINGS OF FACT
We adopt the Examiner’s findings of fact as set forth in the Answer.

ANALYSIS
Forlin was cited by the Examiner for describing a process in which
dinitrotoluene was hydrogenated in the presence of a catalyst to yield
toluenediamine of a purity over 99% after distillation (Answer 5). The
Examiner found that Forlin’s process met steps a) and b) of claim 1.
Although the Examiner determined that Forlin did not expressly disclose
whether cyclic ketones were present in his purified toluenediamine in the
claimed range, the Examiner found that a purification step was performed
with the intent to produce toluenediamines with high purity (id. at 8). The
Examiner found that since Forlin went through purification steps to
eliminate by-products and improve purity, it was reasonable to conclude that
cyclic ketones were reduced to the claimed levels of less than 0.1% by
weight (id. at 9).
Appellants contend that cyclic ketones were not removed by Forlin’s
process. They assert that the conventional distillation process described by
Forlin “will simply pass the cyclic ketones from the amine to the isocyanate
since these distillation processes are not able to distinguish the cyclic
ketones from the amine on the basis of boiling points.” (App. Br. 9; see also
Reply Br. 7.)
The Examiner found that process steps a) and b) of claim 1 were
indistinguishable from the process described in Forlin. The apparent identity
between the prior art and the claimed process served as the Examiner’s
rationale for concluding that Forlin’s process would result in a purified
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5
“toluenediamine which contains a total of less than 0.1% by weight of cyclic
ketones” as required by claim 1. The Examiner’s reasoning was fact-based
and logical. The burden therefore properly shifted to Appellants to show
that Forlin’s process did not produce a toluenediamine with the claimed
cyclic ketone levels. Best, 562 F.2d at 1255; Kumar, 418 F.3d at 1368.
Appellants did not meet this burden. Appellants did not provide
persuasive evidence or reasoning that Forlin’s toluenediamine – produced by
the same process which is claimed – comprised amounts of cyclic ketone in
excess of those required by the claims. The argument that Forlin’s
distillation process can not separate out cyclic ketones due to the closeness
of their boiling points (Reply Br. 7-8) is not substantiated by objective
evidence. All we have before us is an argument made by counsel. Even the
reasoning about boiling point closeness is not buttressed by independent
evidence of the actual boiling points of the compounds and how boiling
point proximity would interfere with purification as described by Forlin.
Counsel’s unsupported argument does not outweigh the Examiner’s
evidence of the apparent equivalence of the claimed and prior art processes.
Appellants make arguments about the examples in the patent
application (App. Br. 15). But the claims are not limited to the processes
described in the examples and no comparison with Forlin’s process was
performed.
For the foregoing reasons and those presented by the Examiner, we
affirm the rejection of claim 1. Claims 2-8 fall with claim 1 because
separate reasons for their patentability were not provided. See 37 C.F.R. §
41.37(c)(1)(vii).

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Application 11/448,265

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TIME PERIOD FOR RESPONSE
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

KMF

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