Ex parte Chabardes et al.

Board of Patent Appeals and Interferences

Apr 15, 1998

07864385 (B.P.A.I. Apr. 15, 1998)

Application for patent filed April 6, 1992. According to appellants the1
application is a continuation of Application 07/652,049, filed February 8, 1991
(ABN).
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PIERRE CHABARDES
and CLAUDE MERCIER
_____________
Appeal No. 94-1868
Application 07/864,3851
______________
ON BRIEF
_______________
Before JOHN D. SMITH, WARREN and WALTZ, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 USC § 134 from the final
rejection of claims 1 through 6, 8 through 20, and 24 and 25.
Claim 1 is representative and is reproduced below:
1. A process for the preparation of a terpenic ketone
comprising the steps of:
Appeal No. 94-1868
Application 07/864,385
2
reacting, in the presence of water, a butadiene
derivative of the formula:
wherein R is a hydrocarbon radical having 1 to 20 carbon atoms
with a $-keto ester; and
causing the product of said reaction to undergo
decarbalkoxylation in the presence of water without adding an
additional component selected from the group consisting of a
solvent and a decarbalkoxylating agent, wherein said reaction
step and said decarbalkoxylation are carried out in the same
reaction zone.
The references of record relied upon by the examiner are:
Celli 4,092,362 May 30, 1978
Morel 4,621,165 Nov. 4, 1986
The appealed claims stand rejected under 35 USC § 103 over
Morel in view of Celli.
We reverse.
The subject matter on appeal is directed to a process for
preparing terpenic ketones. These compounds are known precursors
in the synthesis of vitamins A and E and are usable in perfumes.
Appeal No. 94-1868
Application 07/864,385
3
The claimed process comprises a first step of reacting, in the
presence of water and a rhodium catalyst, a butadiene derivative
substituted at the two carbon position by a hydrocarbon chain
with a $-keto ester to produce a keto ester reaction product.
See the specification at page 6, lines 14 through 16. In a
second step of the claimed process, the above reaction product is
caused to undergo decarbalkoxylation in the presence of water.
Importantly, the decarbalkoxylation step is carried out without
adding an additional solvent or decarbalkoxylating agent. Also
the claimed two-step reaction process is carried out in the same
reaction vessel. Thus the appealed claims require that both the
reaction step and the step of decarbalkoxylation are carried out
?in the same reaction zone? which is said to eliminate a
potentially costly and time consuming isolation step required by
prior art processes. See the Brief at page 10.
The examiner contends that the claimed process is rendered
prima facie obvious in view of the combined teachings of Morel
and Celli. Although the examiner’s stated rejection is not
without merit, appellants argue, and we agree, that neither Morel
nor Celli teach or suggest a single reaction zone process as
claimed by appellants. The examiner’s contention that the
claimed ?same reaction zone? process has not been shown by
Appeal No. 94-1868
Application 07/864,385
4
appellants to enhance the yields of terpenic ketone product, in
effect, places the cart before the horse. Here, it is only
appellants’ disclosure which suggests a single reaction zone
process, not the prior art. We have little doubt that one
ordinarily skilled in this art, working with the available
knowledge and expertise of the reactions in question, could have
designed a process as claimed. However, the mere fact that the
prior art processes could have been so modified to have been
carried out in the same reaction zone would not have made the
claimed process obvious unless the prior art suggested the
desirability of this modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In short, we agree
with appellants that the combined disclosures of the relied upon
references fail to establish a prima facie case of obviousness
for the specifically claimed process on appeal. We are therefore
constrained to reverse the examiner’s rejection of the appealed
claims under 35 USC § 103.
Appeal No. 94-1868
Application 07/864,385
5
The decision of the examiner is reversed.
REVERSED
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Appeal No. 94-1868
Application 07/864,385
6
FINNEGAN, HENDERSON, FARABOW, GARRETT
& DUNNER
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