Ex parte JAFFE et al.

Board of Patent Appeals and Interferences

Mar 31, 1998

08153550 (B.P.A.I. Mar. 31, 1998)

Application for patent filed November 16, 1993. 1
According to appellants, this application is a continuation of
Application No. 07/924, 208, filed August 3, 1992; which is a
continuation-in-part of Application No. 07/737,799, filed
July 26, 1991; which is a continuation of Application No.
07/520,487, filed May 8, 1990, all abandoned.
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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journal and (2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte EDWARD E. JAFFE and MARTIN TANNER
________________
Appeal No. 96-0700
Application No. 08/153,5501
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and WARREN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-3, 14
and 15. Claims 4-13, the other claims in the present
application, have been allowed by the examiner. A copy of
illustrative claim 1 is appended to this decision.
Appeal No. 96-0700
Application No. 08/153,550
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The examiner relies upon the following references as
evidence of obviousness:
Hein et al. (Hein) 2,985,661 May 23, 1961
Christmann et al. (Christmann) 3,538,095 Nov. 3, 1970
Hine, "Quantitative Correlations of Rates and Equilibria,
Physical Organic Chemistry 85-87 and 99 (1962).
Appellants' claimed invention is directed to a process for
preparing a fluorescent yellow pigment of the recited formula.
The process involves reacting tetrachlorophthalic anhydride with
a diaminobenzyl compound, such as o-phenylenediamine, in the
presence of either acetic acid or propionic acid as a solvent.
Appellants submit at page 3 of the Brief that appealed
claims 1-3, 14 and 15 stand or fall together.
Appealed claims 1-3, 14 and 15 stand rejected under
35 U.S.C. § 103 as being unpatentable over Christmann, taken
alone, or in combination with Hein.
We have thoroughly reviewed each of appellants' arguments
for patentability, as well as the declaration and reference
evidence relied upon in support thereof. However, we fully
concur with the examiner that the claimed subject matter would
have been prima facie obvious to one of ordinary skill in the art
within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the examiner's rejection for
essentially those reasons expressed in the Answer.
Appeal No. 96-0700
Application No. 08/153,550
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There is no dispute that Christmann discloses a process for
preparing a yellow pigment which is analogous to the claimed
process, i.e., Christmann utilizes tetrabromophthalic anhydride
as a reactant instead of the claimed tetrachlorophthalic
anhydride. We note "[a]ppellants agree that the process of
present claim 1 is analogous to the reaction disclosed in the
Christmann et al. reference" (page 4 of Brief). As with the
claimed reaction, the Christmann reaction is performed in the
presence of acetic acid as a solvent. Accordingly, based upon
the close similarity in chemical structure between the
chlorinated starting reactant of the claimed process and the
brominated starting material of the Christmann process, i.e., the
bromine substituent is the next adjacent element to chlorine in
the Group VIIA halogens, we concur with the examiner that it
would have been prima facie obvious for one of ordinary skill in
the art to replace the bromine substituents of Christmann with
the chlorine substituents of appellants with the reasonable
expectation that a useful pigment would be the resultant product.
Moreover, we find that the conclusion of obviousness is
substantially fortified by the disclosure of Hein which expressly
exemplifies the claimed reaction of tetrachlorophthalic anhydride
with o-phenphenylene diamine, albeit in a different acidic
solvent. In our view, not only would Hein strongly suggest
Appeal No. 96-0700
Application No. 08/153,550
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replacing the bromine substituents of Christmann with chlorine
substituents, but Christmann would suggest replacing the
polyphosphoric acid solvent of Hein with acetic acid. We are
satisfied that the collective teachings of Christmann and Hein
provide considerable evidence of the prima facie obviousness of
the claimed process.
Like the examiner, we do not find that the Roberts
publication cited by appellants and the declaration of Jaffe, one
the present inventors, outweigh the evidence of obviousness of
record. While the Roberts publication is submitted for the
proposition that "the nature of remote substituents can exert an
effect on the reaction" (page 4 of Brief), Roberts is only
tangentially relevant to the specific reactions disclosed by
Christmann and presently claimed. Roberts discloses no reactions
between phthalic anhydrides and benzyl diamines. While it can be
said that Roberts supports the proposition that the substitution
of remote substituents may render the reaction somewhat
unpredictable, it must be borne in mind that absolute
predictability is not a requirement for a finding of obviousness
under 35 U.S.C. § 103. In re O'Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988). The mere possibility of
failure does not undermine the conclusion of obviousness. In re
Moreton, 288 F.2d 940, 943-44, 129 USPQ 288, 291 (CCPA 1961).
Appeal No. 96-0700
Application No. 08/153,550
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The Jaffe declaration which characterizes the tetrabromo
product of Christmann as a dye instead of a pigment is of little
probative value in establishing the nonobviousness of the claimed
process. The declaration includes no objective evidence that
either the claimed process or its product is unexpectedly
different than the process or product of Christmann. The
statement that workers under Dr. Jaffe's supervision failed in
their attempt to prepare a tetrafluoro compound by a process that
is analogous to the one disclosed in Christmann is mostly
irrelevant to the process of preparing the tetrabromo compound
disclosed in Christmann and the tetrachloro compound presently
claimed. Furthermore, the declaration provides no specifics
regarding the "analogous" process performed by the workers. We
note that appellants state at page 3 of their Reply Brief that
some of the criticisms of the Jaffe declaration set forth in the
Examiner's Answer may have merit, and "[a]ppellants did not rely
on this declaration for any position set forth in the Appeal
Brief."
Conspicuously absent in the present record is any side-by-
side comparative evidence between the claimed product and either
the tetrabromo yellow to red pigments of Christmann or yellow
pigments of Hein's EXAMPLE 15. As a result, appellants have
presented no comparative evidence with the closest prior art that
Appeal No. 96-0700
Application No. 08/153,550
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would serve to rebut the prima facie case of obviousness
established by the examiner.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Michael W. Glynn
Ciba-Geigy Corp.
Patent Dept.
520 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591-9005
Appeal No. 96-0700
Application No. 08/153,550
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APPENDIX
1. A process for preparing a fluorescent yellow pigment of
the formula
wherein R and R are independently hydrogen, halogen, C -C alkyl1 2 1 5
or C -C alkoxy, which comprises reacting tetrachlorophthalic1 3
anhydride with a compound of the formula
wherein R and R are defined as above, at an elevated1 2
temperature, in the presence of a solvent selected from the group
consisting of acetic acid and propionic acid, growing said
pigment in the same step, and subsequently recovering said
pigment.