Ex Parte Diehl et al

Board of Patent Appeals and Interferences

May 24, 2007

10447227 (B.P.A.I. May. 24, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VOLKER DIEHL, ULRICH JAGER,
JURGEN SCHRODER, and JOACHIM THIEL

____________

Appeal 2007-0125
Application 10/447,227
Technology Center 1700
____________

Decided: May 24, 2007
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
PETER F. KRATZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner's final rejection of claims
1 through 20, all of the claims pending the above-identified application. We
have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.

Appeal 2007-0125
Application 10/447,227

I. APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a process for cleaning an
apparatus in which:
(meth)acrylic acid-containing organic solvents have been
treated and/or generated and contain fouling and/or polymer
formed in an undesired manner and residues of the organic
solvent (Specification 1, ll. 5-10).

Details of the cleaning process are recited in representative claim 1 which is
reproduced below:
1. A process for cleaning apparatus in which (meth)acrylic acid-
containing organic solvents have either been treated, generated, or both
treated and generated, wherein said apparatus contains residues of the
organic solvent and at least one of polymers and fouling products formed by
a method of making (meth)acrylic acid, which process comprises subjecting
the apparatus contents to a stream distillation in the apparatus thereby
forming a vapor phase, condensing the vapor phase removed from the
apparatus and separating the resulting condensate into an aqueous and an
organic phase, the organic phase comprising residues of the organic solvent.

According to page 7 of the Specification:

A steam distillation of the contents of the apparatus refers to
any process in which, on the one hand, steam is generated in the
apparatus to be cleaned and/or steam is fed to the apparatus to
be cleaned and, on the other hand, vapor phase is withdrawn
from the apparatus to be cleaned.

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Application 10/447,227

II. PRIOR ART
As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Ueoka US 4,956,493 Sep. 11, 1990
Aichinger WO 99/20595 Apr. 29, 19991
Mitsumoto US 2001/0016668 A1 Aug. 23, 2001
Schroder DE 102 11 273 A1 Mar. 6, 20032
Yada US 2004/0260122 A1 Dec. 23, 2004

III. REJECTION
The Examiner has rejected the claims on appeal as follows:
1) Claims 1 through 5 and 7 through 11 under 35 U.S.C. § 102(b)
as anticipated by the disclosure of Aichinger as explained by Ueoka;
2) Claim 15 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Aichinger (as explained by Ueoka) and Yada;
3) Claims 15 through 18 and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Aichinger (as explained by
Ueoka) and Schroeder; and

1 The Examiner has relied on US 6,568,406 B2 (Aichinger) published on
May 27, 2003, as corresponding to WO 99/20595 relied on in the statements
of the rejections set forth in the Answer (Answer 3). Our reference to
Aichinger in this decision is to US 6,568,406 B2.

2 The Examiner has relied on US 2005/0115590 A1(Schroeder) published
on June 2, 2005 as corresponding to DE 102 11 273 A1 relied on in the
statement of the rejection set forth at page 7 of the Answer. Any reference
to Schroder in this decision is to the corresponding published U.S. patent
application, namely US 2005/0115590 A1.

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Application 10/447,227

4) Claims 16 through 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Aichinger (as explained by
Ueoka) and Mitsumoto.

IV. PRINCIPLES OF LAW
Under35 U.S.C. § 102(b), “every element of the claimed invention
must be identically shown in a single reference….” In re Bond, 910 F.2d
831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990). However, “extrinsic
evidence may be considered when it is used to explain, but not to expand,
the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388,
390, 21 USPQ2d 1281, 1284 (Fed. Cir. 1991).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., the
problem solved). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18, 148 USPQ2d 459, 467 (1966). “[A]nalysis [of whether the subject
matter of a claim is obvious] need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. Teleflex, Inc., 127 S. Ct. 1727, 1741,
82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006); see also DyStar Textilfarben GmBH
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in
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Appeal 2007-0125
Application 10/447,227

the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”). The analysis supporting obviousness,
however, should be made explicit and should “identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements” in the manner claimed. KSR, 127 S. Ct. at 1732, . 82 USPQ2d at
1389.

V. FACTS, ANALYSIS, AND CONCLUSIONS OF LAW
The Examiner’s § § 102(b) and 103 rejections are premised upon
Achinger, as explained by Ueoka, describing either expressly or inherently
the steam distillation, condensation and separation steps recited in claim 1
(Answer 3-11). The dispositive question is, therefore, whether Achinger, as
explained by Ueoka, describes either expressly or inherently the claimed
steam distillation, condensation and separation steps. On this record, we
answer this question in the negative.
As correctly stated by the Appellants (Br. 5):
Aichinger et al's method involves emptying the plant parts,
flushing the plant parts with aqueous alkali metal hydroxide
solution, removing the solution from the plant parts, and
optionally washing the plant parts with water and drying the
plant parts (column 2, lines 23-29). Aichinger et al further
discloses that after removal of the alkali metal hydroxide
solution, alcohols formed during the cleaning are separated
therefrom, such as by phase separation, distillation or stripping,
which can involve the use of steam (column 3, line 28ff). This
is the only disclosure of steam in Aichinger et al. (footnote
omitted.)

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Application 10/447,227

In other words, Aichinger employs aqueous alkali metal hydroxide solution,
not steam, to clean the parts of a (meth)acrylic ester (not acid) producing
apparatus and recovers no vapor phase from such apparatus for the purposes
of condensing and separating components in the vapor phase (Aichinger,
col. 3, ll. 1-55). Thus, even assuming that Ueoka explains that the
(meth)acrylic ester producing apparatus taught by Aichinger inherently
contains the same residues, organic solvent and polymer impurities as those
in a (meth)acrylic acid producing apparatus, we determine that the Examiner
has not demonstrated that Aichinger describes either inherently or expressly
each and every element of the invention recited in claim 1. Nor do we find
any identification of a reason on the part of the Examiner that would have
prompted a person of ordinary skill in the relevant field to employ the steam
distillation, condensation and separation steps recited in claim 1.
Accordingly, we are constrained to agree with the Appellants that on
this record, the Examiner has not established a prima facie case of
unpatentability under § § 102(b) or 103(a).

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Appeal 2007-0125
Application 10/447,227

VI. ORDER
The decision of the Examiner is reversed.

REVERSED

Sld/ls

C. IRVIN MCCELLAND
OBLON, SPIVAK, MCCLELLAND, MAIER
& NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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