Ex Parte Matsumoto et al

Patent Trials and Appeals Board

Mar 26, 2019

14977922 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/977,922 12/22/2015 Shigeaki Matsumoto
38834 7590 03/28/2019
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P25970USOO 1056
EXAMINER
SEIFU, LESSANEWORK T
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGEAKI MATSUMOTO, KEISUKE ITO and
MASA YOSHI MATSUNO
Appeal2018-005774
Application 14/977 ,922
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claim 1 under 35 U.S.C. § 103 as obvious over
1 In explaining our Decision, we cite to the Specification of February 2, 2016
(Spec.), Final Office Action of July 6, 2017 (Final), Appeal Brief of
November 29, 2017(Appeal Br.), and Examiner's Answer of March 9, 2018
(Ans.).
2 Appellant is the applicant under 37 C.F.R. § 1.46, Osaka Organic Chemical
Industry Ltd., which is also identified as the real party in interest. Appeal
Br. 2.
Appeal2018-005774
Application 14/977 ,922
Otsuka3 in view of Hershberger4 and Scott5 and claims 1 and 2 under 35
U.S.C. § 103 as obvious over Ida6 in view of Hershberger and Scott. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a system (apparatus) for producing a
(meth)acrylate. Figure 1 depicts the apparatus of claim 1. The apparatus
includes a Reactor Al having a distillation column 2 and a Distillation
Apparatus B3 having a distillation column 4. Spec. ,r 43. The apparatus is
shown in Appellant's annotated Figure 1 (Appeal Br. 3), which we
reproduce below:
Reactor A Distillation Apparatus B1
Annotated Figure 1 is a schematic drawing showing a transesterification
apparatus annotated with "Reactor A" and "Distillation Apparatus B" labels
and with the bolding of pipe 1 Oe 7
3 Otsuka et al., US 7,411,086 B2, issued Aug. 12, 2008.
4 Hershberger et al., US 2005/0107629 Al, published May 19, 2005.
5 Scott, US 4,013,521, issued Mar. 22, 1977.
6 Ida et al., JP 08-268938, published Oct. 15, 1996 (as translated).
7 Superscript "1" after "B" is a footnote.
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Application 14/977 ,922
As can be seen from Appellant's bolding of pipe lOe, the existence of
this pipe is central to the dispute in this appeal. Pipe 1 Oe is connected to the
lower part of distillation apparatus Bat 3 (called B3 in the Specification) to
allow reflux of residue in the distillation apparatus B3 to be sent to
distillation column 2 of reactor Al. Spec. ,r 53. This residue contains water
and an alcohol byproduct from the transesterification reaction within reactor
Al. Spec. ,r 90.
More specifically, the process that occurs in the apparatus is as
follows. A transesterification of (meth)acrylate and an alcohol is carried out
in reactor Al. Spec. ,r 44. The byproduct vapor, which contains an
azeotrope of a solvent with byproduct alcohol, travels from distillation
column 2 to condenser 6 to switching apparatus 7 where a portion of the
condensate is fed through line 5d to separation apparatus 8 such as a
decanter. Spec ,r,r 54--55. Water is added to the condensate so it separates
into two layers in separation apparatus 8. Spec. ,r 56. The lower layer
within separation apparatus 8 mainly contains byproduct alcohol and water,
but also contains some solvent and (meth)acrylate. Spec. ,r 62. This lower
layer is fed via pipe 5f to distillation apparatus B3 where it is distilled to
generate a vapor containing the (meth)acrylate, the byproduct alcohol, and
the solvent before the temperature is raised to produce a further vapor of
byproduct alcohol. Spec. ,r 64. Both vapors are removed from the top of the
distillation column 4. Spec. ,r 64. The residue in the bottom of distillation
apparatus B3 travels via pipe 1 Oe back to pipe 5d. Spec. ,r 53. The residue
contains water and byproduct alcohol. Spec. ,r 90.
In the embodiment of Figure 2, a further distillation apparatus CI4,
which can be the same as the distillation apparatus B3 of Figure 1, is added
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Application 14/977 ,922
to separate the water from the alcohol. Spec. ,r,r 90-92. The water is then
fed via pipe 18e to pipe 5d. Claim 2 is directed to the embodiment of Figure
2.
As we stated above, it is the pipe 1 Oe in Figure 1 that is at the center
of the dispute in this appeal. The analogous pipe 18e in Figure 2 is the
subject of a related dispute. We reproduce claim 1 below with the limitation
of most interest highlighted and reference numerals from Figure 1, to further
illustrate:
1. A system for producing a (meth)acrylate used in
producing a (meth)acrylate by transesterification, comprising a
reactor A having a distillation column and a distillation
apparatus B having a distillation column, wherein
an upper part of the distillation column of the reactor A is
connected with a condensing apparatus through a pipe; the
condensing apparatus is connected with the upper part of the
distillation column through a switching apparatus with a pipe
for refluxing a part of a condensate obtained in the condensing
apparatus to the upper part of the distillation column; and the
condensing apparatus is connected with a liquid separation
apparatus through a switching apparatus with a pipe for feeding
the condensate remaining in the condensing apparatus to the
liquid separation apparatus;
an upper part of the liquid separation apparatus is
connected with the distillation column through a pipe for
refluxing an upper layer of the condensate separated by the
liquid separation apparatus to the distillation column; and a
lower part of the liquid separation apparatus is connected with
the distillation apparatus B through a pipe for feeding a lower
layer of the condensate separated by the liquid separation
apparatus to the distillation apparatus B;
an upper part of the distillation column of the distillation
apparatus B is connected with a condensing apparatus through a
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Application 14/977 ,922
pipe; the condensing apparatus is connected with the upper part
of the distillation column through a switching apparatus with a
pipe for refluxing a part of a condensate obtained in the
condensing apparatus to the upper part of the distillation
column; and the condensing apparatus is connected with a
collecting unit for collecting the condensate remaining in the
condensing apparatus through a switching apparatus with a pipe
for feeding the remaining condensate to the collecting unit; and
a lower part of the distillation apparatus B is connected
with a pipe [5d] between the switching apparatus [7] and the
liquid separation apparatus [8] in the reactor A through a pipe
[JOe] for refluxing a residue existing in the distillation
apparatus B to the distillation column of the reactor A.
Appeal Br. 20-21 ( claims appendix).
OPINION
Turning first to the Examiner's rejection of claim 1 as obvious over
the combination of Otsuka, Hershberger and Scott, the issue is: Has
Appellant identified a reversible error in the Examiner's finding of a reason
or suggestion within the prior art to connect a distillation apparatus B to the
lower layer draw out line (12) of Otsuka to recover byproduct alkyl alcohol
from the water in that line and recycle the water to the water supply line (9)
of Otsuka?
Appellant has not identified such an error. Thus, for the reasons
provided by the Examiner in the Final and the Answer, we sustain the
rejection. We add the following primarily for emphasis.
There is no dispute that Otsuka teaches an apparatus for producing a
(meth)acrylate that includes the reactor (1 ), distillation column (3),
condensing apparatus ( 5), switching apparatus ( 6), liquid separation
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Application 14/977 ,922
apparatus ( decanter 10) with the pipe connections required by claim 1.
Compare Final 3--4, with Appeal Br. 6-7. There is further no dispute that, as
found by the Examiner, Otsuka adds water at a location between switching
apparatus 6 and liquid separation apparatus 10 through water supply line 9.
Compare Final 3, citing Otsuka col. 7, 11. 9-32 and Fig. 2, with Appeal Br. 6.
As found by the Examiner, Otsuka's liquid separation apparatus (decanter
10) is connected to lower layer draw out line 12 and draws out the lower
aqueous phase, which is mostly composed of water and byproduct alcohol.
Final 3, citing Otsuka col. 4, 11. 41-59; see also col. 7, 11. 23-32 and Fig. 2.
As acknowledged by the Examiner, Otsuka does not detail where
draw out line 12 leads. Final 4; Otsuka col. 7, 11. 23-32 and Fig. 2. But the
Examiner concludes it would have been obvious to connect draw out line 12
to a distillation column, like Appellant's distillation column B, and strip out
the alcohol and other light ends from the water and send the water back to
line 9 because "it is typical in the art to pass a process stream comprising an
aqueous phase which is mainly composed of water and an alcohol to a
distillation apparatus [such as stripper (12) of Hershberger] to recover the
alcohol from the aqueous phase" and "it is typical in the art to reuse water
withdrawn from the bottoms of the distillation apparatus B as a source of
process water." Final 4 ( citing Hershberger ,r,r 27, 28, 31 and Fig. 1 and
Scott col. 2, 11. 20-26 and Fig).
Appellant does not dispute the Examiner's findings regarding what is
typical for distilling aqueous alcohol streams and recycling the separated
streams. Appeal Br. 8-11. Instead of calling into question any of the
specific findings of the Examiner, Appellant points out what each of the
references fails to teach and concludes that the combination does not
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disclose what is claimed. Appeal Br. 6-11. But by failing to address the
Examiner's specific findings, Appellant fails to identify a reversible error in
the obviousness rejection.
A preponderance of the evidence supports the Examiner's finding of a
reason to add a distillation apparatus and recycle the separated water. The
Examiner's reason is based on Otsuka's need for a water supply at line 9 and
the known ability to distill an aqueous alcohol stream, such as that emerging
from Otsuka's line 12. Final 4--5. As acknowledged by Appellant,
Hershberger teaches an esterification apparatus in which the lower layer
draw line ( 109) sends the aqueous layer from liquid separation apparatus
(phase separator 4) to alcohol stripper 12 through line 122. Appeal Br. 8;
Hershberger ,r 27. Alcohol stripper 12 recovers alcohol and some ethyl
acrylate out the top through line 123 leaving bottoms wastewater, which
Hershberger sends through line 124 to a waste treatment plant. Hershberger
,r 31. But Scott teaches, as found by the Examiner, recycling both of the
streams of water and alcohol output by the distillation column. Final 4,
citing Scott col. 2, 11. 20-26 and the Fig. Thus, a preponderance of the
evidence supports the Examiner's conclusion of obviousness.
Appellant's arguments against the rejection of claims 1 and 2 as
obvious over Ida, Hershberger, and Scott fail for similar reasons. Appellant
merely summarizes the teachings of Ida, relies on the summaries of
Hershberger and Scott presented in the arguments against the rejection over
Otsuka, Hershberger, and Scott and concludes that the references do not
disclose what is claimed. Appeal Br. 11-18. But Ida is directed to an
apparatus similar to that of Otsuka and the Examiner applies Hershberger
and Scott in an analogous manner. Adding known distillation columns for
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Application 14/977 ,922
their known separation ability and recycling the separated streams is nothing
more than using known apparatus for their known results. "The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,416 (2007). Appellant has not identified a
reversible error in the Examiner's findings or the conclusion of obviousness
for either rejection.
CONCLUSION
In summary:
1 § 103 Otsuka,
Hershberger,
Scott
1 and2 § 103 Ida, Hershberger,
Scott
Outcome
DECISION
The Examiner's decision is affirmed.
1
1 and2
1 and2
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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