Ex Parte Krafft et al

Patent Trial and Appeal Board

Nov 14, 2016

12502296 (P.T.A.B. Nov. 14, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/502,296 07/14/2009 Philippe KRAFFT 345450US0DIV 5978
22850 7590 11/16/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
KEYS, ROSALYND ANN
ART UNIT PAPER NUMBER
1671
NOTIFICATION DATE DELIVERY MODE
11/16/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE KRAFFT, PATRICK GILBEAU,
BENOIT GOSSELIN, and SARA CLAESSENS1
Appeal 2014-004574
Application 12/502,296
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for producing epichlorohydrin. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is SOLVAY
ADVANCED POLYMERS, LLC. (Appeal Br. 2.)
Appeal 2014-004574
Application 12/502,296
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—5, 7, 8, and 10-22 are on appeal. (Claims Appendix,
Appeal Br. 25—29.) Claim 1 is illustrative and reads as follows:
Claim 1. A process for producing epichlorohydrin comprising subjecting
dichloropropanol to a dehydrochlorination operation, wherein said
dichloropropanol has been produced from glycerol that has been obtained
from renewable raw materials and comprises aldehydes.
(Appeal Br. 25.)
Examiner’s Rejection
Claims 1—5, 7, 8, and 10-22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ueoka,2 Frohner,3 Polin,4 Lambom,5 Clayton,6
Brockmann,7 Busby,8 Schroder,9 Khalil,10 Gibson,* 11 and Furman.12 (Ans.
2 Ueoka et al., US 2001/0014763 Al, published Aug. 16, 2001 (“Ueoka”).
3 Frohner, US 1,329,076, issued Jan. 27, 1920 (“Frohner”).
4 Polin et al., US 2,314,893, issued Mar. 30, 1943 (“Polin”).
5 Fambom, Modern Soaps, Candles and Glycerin, D. Van Nostrand Co.
(Fondon), 3rd ed., 542—50, 573, and 574 (1918) (“Fambom”).
6 Clayton, US 2,218,279, issued Oct. 15, 1940 (“Clayton”).
7 Brockmann et al., US 4,655,879, issued Apr. 7, 1987 (“Brockmann”).
8 Busby et al., The Purification of Glycerin by Ion-Exchange, 29 The
Journal of the American Oil Chemists’ Society, 318-20 (1952)
(“Busby”).
9 Schroder et al., Glycerol as a By-Product of Biodiesel Production in Diets
for Ruminants, Institute of Animal Nutrition, Physiology and
Metabolism, University of Kiel, 1—6 (1999) (“Schroder”).
10 Khalil et al., US 2005/0011112 Al, published Jan. 20, 2005 (“Khalil”).
11 Gibson, The Preparation, Properties, and Uses of Glycerol Derivatives.
Part III. The Clorohydrins, Chemistry and Industry, 949-75 (1931)
(“Gibson”).
12 Furman et al., US 2,860,146, issued Nov. 11, 1958 (“Furman”).
2
Appeal 2014-004574
Application 12/502,296
3.)
3
Appeal 2014-004574
Application 12/502,296
Issue
Whether a preponderance of the evidence of record supports the
Examiner’s conclusion of obviousness under 35 U.S.C. § 103(a).
Analysis
This issue in this case turns on whether the glycerol used in the claimed
process “comprises aldehydes.” (Appeal Br. 25.)
The Examiner concludes that
[o]ne having ordinary skill in the art at the time the invention was
made would have found it obvious that the crude glycerol utilized
in the process of Ueoka [] more likely than not contains acrolein
as taught by Frohner [] and Polin . . . since Ueoka [] teach that
their crude glycerol can be obtained by transesterification,
hydrolysis or saponification of a fat or oil; Polin [] teach that
during hydrolysis glycerin decomposes to acrolein.13
(Ans. 5—6.)
Appellants argue that Ueoka “fails to describe or imply the presence
of aldehydes in the crude glycerol” and that “there is no evidence
establishing that the crude glycerol of Ueoka [] ‘more likely than not’
contains aldehydes.” (Appeal Br. 5—6.) Moreover, according to Appellants,
the secondary references relied upon by the Examiner, as evidence that the
crude glycerol of Ueoka “more likely than not” contains aldehydes,
“describe remarkably different processes which are materially different than,
and non-applicable to, the processes in Ueoka [] which produce the crude
glycerol.” (Id. at 5.)
The Examiner relies on Ueoka for the glycerol of the claimed process,
but acknowledges that Ueoka “[does] not disclose that the crude glycerol
13 Acrolein is an aldehyde. (See Reply Br. 4.)
4
Appeal 2014-004574
Application 12/502,296
comprises aldehydes.” (Ans. 3.) However, the Examiner states that Ueoka
does disclose that the crude glycerol “can be obtained by transesterification,
hydrolysis or saponification of a fat or oil.” {Id. at 4, citing Ueoka 120.)
Accordingly, to support the “more likely than not” position, the Examiner
relies on the teachings of Polin and Frohner. (Ans. 5.)
We find that, on this record, the Examiner’s analysis is flawed. A
prima facie case for obviousness “requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Inti Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003). However, Ueoka does not teach or suggest glycerol that comprises
aldehydes. Rather, at most, Ueoka provides a general or generic description
of several processes that can be used to obtain its crude glycerol
(“transesterification, hydrolysis or saponification of a fat or oil”). (Ueoka
120.) And even if we were to assume that the particular or specific
processes described in other references, such as the hydrolysis process of
Polin, do produce glycerol containing aldehydes, we are left with mere
conjecture or speculation on the part of the Examiner (“more likely than
not”) as to whether Ueoka’s glycerol contains aldehydes. That is not
sufficient. See Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed.
Cir. 2006) (“determinations of obviousness . . . should be based on evidence
rather than on mere speculation or conjecture.”)
Additionally, the Examiner fails to provide a reason to require a
glycerol starting material that “comprises aldehydes” as required by claim 1,
and to therefore substitute a different glycerol composition that “comprises
aldehydes” for the glycerol of Ueoka. An invention “composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.... [I]t can be important
5
Appeal 2014-004574
Application 12/502,296
to identify a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Conclusion of Law
A preponderance of the evidence of record fails to support the
Examiner’s conclusion that claims 1—5, 7, 8, and 10-22 are obvious under
35U.S.C. § 103(a).
SUMMARY
We reverse the rejection of all claims on appeal.
REVERSED
6