Ex Parte Fischer et al

Board of Patent Appeals and Interferences

Feb 28, 2007

10380591 (B.P.A.I. Feb. 28, 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for publication and is not binding precedent of the Board.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 WALTER FISCHER, KATHARINA FRITZSCHE,
WALTER WOLF, and LOTHAR BORE
__________

Appeal No. 2007-0623
Application No. 10/380,591
__________

ON BRIEF
__________

Before SCHEINER, ADAMS and GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-11, which are all the claims pending in this
application.
Claim 11 is illustrative of the subject matter on appeal and is reproduced in
the appendix of this opinion.
The references relied upon by the Examiner are:
Burgess et al. (Burgess) 3,244,667 Apr. 5, 1966
Hartmann et al. (Hartmann), “A simple route to 2H-Naphtho[1,2-c]1,2,3-
Triazoles,” Journal f. prakt. Chemie, Vol. 332, No. 3, pp. 331-335 (1990).

1 Claims 2-11 depend from claim 1.

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Vorozhtzov, “New Synthesis of o-Hydrozyazobenzene,” Zhurnal Russkago
Fiziko-Khimicheskago Obshchestva, Vol. 42, pp. 787-91 (1912), Chem Abstr. No.
6:2959.

Lindley, “Copper Assisted Nucleophilic Substitution of Aryl Halogen,”
Tetrahedron, Vol. 40, No. 9, pp. 1433-1456 (1984).

GROUND OF REJECTION
Claims 1-11 stand rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Hartmann, Burgess, Vorozhtzov and Lindley.
We affirm.

CLAIM GROUPING
Appellants do not separately group or argue the claims. Accordingly, the
claims stand or fall together. Since all claims stand or fall together, we limit our
discussion to representative independent claim 1. Claims 2-11 will stand or fall
together with claim 1. 37 CFR § 1.192(c)(7) (May 2004).

DISCUSSION
Claims 1-11 stand rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Hartmann, Burgess, Vorozhtzov and Lindley.
The Examiner finds claim 1 is directed to “a process of making 2-phenyl-
1,2,3-benzotriazole compounds by reacting an arylazobenzene with an azide
compound.” Answer, bridging sentence, pages 5-6. The Examiner finds
Hartmann “teach[es] a process of making 2-phenyl-naphtha [1,2-c]1,2,3-triazole
by reacting an arylazonaphthalene compound with sodium azide . . . .” Answer,

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page 6. The Examiner recognizes, however, that Hartmann differs from
Appellants’ claimed process by not teaching the same reactants. Id.
Nevertheless, the Examiner argues that the reactants taught by Hartmann are
analogous to the reactants set forth in Appellants’ claimed invention. In addition,
Appellants assert that Hartmann does not teach compounds of formula 1. In
particular, Appellants emphasize that the formula 1 compounds produced by the
claimed process have a hydroxyl in the R5 position, whereas Hartmann’s
corresponding compound contains a methoxy in the R5 position. Brief, page 5,
see also Answer, page 8. The Examiner finds, however, that Burgess teaches
compounds of formula I. Answer, page 6.
The Examiner finds that Vorozhtzov teaches compounds of formula V and
Hartmann teaches compounds of formula IX. Answer, page 6. Therefore, the
Examiner contends that “[t]he use of analogous reactants in a known process[, to
produce a known product,] is prima facie obvious.” Id. Therefore, the Examiner
concludes
[o]ne skilled in the art would . . . be motivated to use analogous
reactants in the process of Hartmann . . . to arrive at the instant
claimed process with the expectation of preparing known
benzotriazole products, which are building blocks for optical
brighteners and as active components in laser dyes.

Answer, page 7. Stated differently, it would have been prima facie obvious to
substitute the formula V compound of Vorozhtzov into Hartmann’s process to
produce the formula I compound taught by Burgess.
Appellants do not address the teachings of Burgess, Vorozhtzov or
Lindley. Therefore, we find Appellants concede to the Examiner’s findings

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Application No. 10/380,591
relative to Burgess, Vorozhtzov and Lindley2. Instead, Appellants focus their
attention on Hartmann. Specifically, Appellants emphasize that the formula 1
compounds produced by the claimed process have a hydroxyl in the R5 position,
whereas Hartmann’s corresponding compound contains a methoxy in the R5
position. Brief, page 5, see also Answer, page 8. Appellants assert that those
skilled in the art recognize that hydroxy and methoxy, while electronically similar,
are not chemically similar. Brief, page 6. Therefore, Appellants contend that a
person of ordinary skill in the art would not expect that the claimed process,
which reacts a compound of formula V with an azide of formula IX, would result
in a compound of formula 1. Brief, page 4.
Instead, Appellants argue that “[a] skilled person would expect that the
acidic phenolic group would react first with the basic azide to form [a phenolate
salt and] HN3 which degrades easily.” Brief, page 6. Appellants assert that the
“phenolate salt would then react in place of the azide as the nucleophile in other
potential reaction steps, leading to other compounds than the desired
benzotriazoles.”3 Id. Therefore, Appellants contend that “[t]here is no motivation
provided from the cited art to attempt such reactions in the presence of a
phenol.” Brief, page 7.

2 The Examiner relies on Lindley to teach a catalyst – the subject matter of claim 11. Answer,
page 7. However, since claim 11 falls together with claim 1, we do not discuss Lindley further.

3 Appellants fail to direct our attention to any evidence on this record that supports this position.
Attorney argument cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA 1977). We recognize Appellants’ reliance on “‘The
Condensed Chemical Dictionary,’ 10th Ed., 1981, Revised by Gessner G. Hawley, page 381,
column right, last item (diphenyl oxide).” This reference, however, was not entered into the
record. Answer, page 3. Accordingly, we have not included this reference in our deliberations.

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Therefore, the issue presented to this panel distills down to whether a
person of ordinary skill in the art would have been motivated to react a
compound of formula V with a compound of formula IX to produce a compound
of formula I. In our opinion, the preponderance of evidence4 on this record
provides the motivation to perform this reaction and the rejection of claim 1 is
affirmed.
“In rejecting claims under 35 U.S.C. § 103, the [E]xaminer bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993), citation omitted. “The test for obviousness is not express suggestion of
the claimed invention in any or all of the references but rather what the
references taken collectively would suggest to those of ordinary skill in the art
presumed to be familiar with them.” In re Rosselet, 347 F.2d 847, 851,
146 USPQ 183, 186 (CCPA 1965).
Prima facie obviousness based on a combination of references requires
that the prior art provide “a reason, suggestion, or motivation to lead an inventor
to combine those references.” Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,

4 Patentability is determined based on a preponderance of the evidence. See In re Oetiker, 977
F.2d 1443, 1446, 24 USPQ2d 1443,1445 (Fed. Cir. 1992) (“[T]he conclusion of obviousness vel
non is based on the preponderance of evidence and argument in the record.”).

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does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.

In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted).
As the Examiner explains, Hartman teaches “that the substitution of
halogen by azide is affected by the substituent bonded to the aryl part (Ar) of [the
arylazonaphthalene compound] and that electron donors make the reaction more
difficult.” Nevertheless, the Examiner finds Table 1 on page 3 of Hartmann
demonstrates that “although the reaction time is longer, a product (e.g.,
compound 13g[ ]5 ) in which the Ar is substituted with an electron donor group
(e.g., 4-OCH3) can be prepared by the process” of reacting an arylazobenzene
with an azide compound. Answer, page 9. Specifically, the Examiner finds
Hartmann “did prepare benzo-1,2,3-triazole compounds even though an electron
donor group was present.” Id. Therefore, Appellants’ unsupported assertions
notwithstanding, the Examiner finds that Hartman provides the motivation to use
arylazonaphthalene compounds (as taught by Vorozhtzov) wherein the Ar part of
the molecule is substituted with other electron donor groups such as hydroxyl.
Answer, page 10. See also Final Rejection, pages 5-6. In our opinion, the
Examiner has met her burden of providing the evidence necessary to establish a
prima facie case of obviousness. Therefore, the evidentiary burden was properly
shifted to Appellants. Appellants, however, failed to satisfy their burden. We find
no evidence of record to suggest that a person of ordinary skill in the art at the
time the invention was made would not have been motivated to combine the

5 See Hartmann, page 3, Table 1.

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Application No. 10/380,591
teachings of Hartmann, Burgess and Vorozhtzov to arrive at a process of
producing the formula I compound of Burgess, using the process of Hartmann,
and formula I and IX compounds of Hartmann and Vorozhtzov. Arguments of
counsel cannot take the place of evidence lacking in the record. Estee Lauder
Inc. v. L’Oreal, S.A., 129 F.3d 588, 593, 44 USPQ2d 1610, 1615 (Fed. Cir.
1997).
On reflection, we find the preponderance of evidence on this record
supports a finding that a person of ordinary skill in the art would have been
motivated to react a compound of formula V with a compound of formula IX to
produce a compound of formula I. Accordingly, we find no error in the
Examiner’s prima facie case of obviousness. Therefore, we affirm the rejection
of claim 1 under 35 U.S.C. § 103 as being unpatentable over the combination of
Hartmann, Burgess, Vorozhtzov and Lindley. As discussed above claims 2-11
fall together with claim 1.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

)
Toni R. Scheiner )
Administrative Patent Judge )
) BOARD OF PATENT
)
Donald E. Adams ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )

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CIBA SPECIALITY CHEMICALS CORPORATION
PATENT DEPARTMENT
540 WHITE PLAINS RD
P.O. BOX 2005
TARRYTOWN, NY 10591-9005

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APPENDIX

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