Ex Parte Kikuchi et al

Patent Trial and Appeal Board

Apr 12, 2018

12473546 (P.T.A.B. Apr. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/473,546 05/28/2009 Minoru KIKUCHI
22850 7590 04/16/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
342459USO 9811
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
04/16/2018 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
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINORU KIKUCHI, KATSUMI SHINOHARA,
HIDEYUKI KUROSE, and TOMOMICHI KANDA
Appeal2017-006681
Application 12/473,546
Technology Center 1700
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
SHELDON M. McGEE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 5, 6, 8-17, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a polyamide production process. Claim 1 is
illustrative:
1. A process for producing a polyamide, comprising:
direct polycondensation of a diamine and a dicarboxylic
acid, substantially in the absence of a solvent in a batch reactor
equipped with a partial condenser;
wherein
Appeal2017-006681
Application 12/473,546
the diamine comprises at least 70 mol% of a
xylylenediamine having at least 20 mol% of
paraxylylenediamine, and
the polycondensation comprises:
(1) feeding the dicarboxylic acid into the reactor;
(2) pressurizing the reactor to increase the inner pressure
to a pressure of from 0.1 to 0.4 MPaG;
(3) maintaining the pressure in the reactor substantially
constant in the range from 0 .1 to 0 .4 MPaG until a start of
pressure reduction in ( 6);
( 4) adding the diamine to the dicarboxylic acid over a
time of from 30 minutes to 150 minutes while the pressure
inside the reactor is maintained at the substantially constant
pressure of operation (2) while keeping the obtained reaction
mixture uniform and in a state of flow;
( 5) separating water vapor from vapors of the diamine
and the dicarboxylic acid evaporated from the reactor in the
partial condenser at the substantially constant pressure of
operation (2) and removing a part of the water vapor from the
reactor while a reflux liquid comprising condensed water,
condensed diamine, condensed dicarboxylic acid and nylon salt
or oligomer washed from the partial condenser are returned to
the reaction mixture; and
( 6) after the addition of the diamine to the diacid,
lowering the pressure inside the reactor to atmospheric pressure
or less at a pressure-lowering speed of from 0.3 to 1.0 MPa/hr;
(7) removing the polyamide product from the reactor;
and subsequently,
(8) conducting another polycondensation according to
operations (1) through (7) in the reactor in a continuous batch
production process;
wherein a temperature of the vapor outlet port side of the
partial condenser in (4) to (6) is controlled to be from a dew-
point temperature of water to a dew point temperature+ 5°C
with the proviso that the vapor outlet side port temperature is
155°C or less, and
wherein an overall batch process time from the start of
the addition of the diamine to the start of taking out the
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Application 12/473,546
polyamide is from one hour and 32 minutes to 3 hours
39 minutes.
The References
References relied upon by the Examiner
Miyamoto
Vandevijver
Shida 1 (machine translation)
Kurose (machine translation)
us 4,433,136
us 5,416,189
JP 2002060486 A
JP 2005139219 A
Feb.21, 1984
May 16, 1995
Feb.26,2002
June 2, 2005
References relied upon by the Appellants
Kikuchi US 2009/0299028 Al Dec. 3, 2009
Polyamide Resin Handbook (translation from Japanese) 142--43 (Jan. 30,
1988).
The Rejections
Claims 1, 5, 6, 8-17, and 19 stand rejected under 35 U.S.C. § 103
over Shida in view of Kurose, Miyamoto and Vandevijver.
OPINION
We affirm the rejection.
The Appellants argue the claims as a group (App. Br. 4--12).
Although the Appellants address claim 1 7 under a separate heading, the
Appellants do not provide a substantive argument for the separate
patentability of that claim (App. Br. 12). We therefore limit our discussion
to one claim, i.e., claim 1. Claims 5, 6, 8-17, and 19 stand or fall with that
claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
1 The Examiner (Ans. 2) and the Appellants (App. Br. 4) refer to
JP 2002/060486 A by the second-named inventor (Shida). For consistency,
we likewise do so.
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Application 12/473,546
The Shida machine translation appears to disclose a method for
making polyamide by the direct reaction of a diamine ("Gia Min") with a
dicarboxylic acid in a molten state in the absence of solvent in a batch
reactor ("time part type manufacturing method") having a partial condenser
("steamy riser tube") (i-fi-f l, 4). The diamine apparently can be 70 mol%
metaxylylenediamine ("meta-KISHIRI") and 30 mol% paraxylylenediamine
("PARAKISHIRI") (i1i19, 34). A sufficient reactor pressure is 0.5 MPa
absolute (0.4 MPaG) or less (i-f 14). A suitable partial condenser internal
temperature range appears to be 50-150 QC (i-fi-f 16, 20). If the partial
condenser's internal temperature is too high, the amount of condensed water
is insufficient to remove from partial condenser surfaces sublimed
dicarboxylic acid deposits which build up during a number of continuous
batches and can cause appearance defects such as fish eye and gel in
polyamide products such as films, bottles and monofilaments, whereas if the
partial condenser's internal temperature is too low, excessive condensation
makes efficient advancing of the reaction difficult (i1i14, 5, 15, 16, 20, 21,
24 ). Sublimed dicarboxylic acid deposits also can be removed from partial
condenser surfaces by use of steam or warm water after the end of a batch
(i-f 22). Preventing accumulation of sublimed dicarboxylic acid on partial
condenser surfaces enables use of diamine/dicarboxylic acid preparation
ratios such as 0.987, 0.997, 0.998 and 1.000 (i1i124, 27-29, 34).
The Kurose machine translation appears to indicate that when
polyamide is made by reacting a diamine with a dicarboxylic acid in a
molten state in the absence of a solvent in a batch reactor, lowering the
reactor pressure shortens polymerization time, but if the pressure is lower
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Application 12/473,546
than needed, sublimation deposits adhere to and block gas phase portions
such as exhaust lines (i-fi-f l, 5, 6, 11 ).
Miyamoto discloses a process for making polyamide by reacting a
diamine with a dicarboxylic acid in a molten state in the absence of a solvent
in a batch reactor wherein "[ t ]he time required to add the diamine to the
reaction mixture varies depending upon the size of the reaction vessel, but it
is generally in the range of 0.5 to 10 hours" (col. 3, 11. 40-46, 61---64).
Vandevijver discloses a process for making polyamide by reacting a
diamine with a dicarboxylic acid in a molten state in the absence of a solvent
in a batch reactor wherein "the pressure is only allowed to rise to a value no
greater than 10 bar and sufficient to prevent the solidification of the reaction
mixture and a substantial loss of diamine compounds" (col. 3, 11. 12-15), and
"[ o ]nee the polycondensation phase under pressure has finished, it is
possible to leave the pressure to fall to atmospheric pressure" (col. 5, 11. 39-
41 ). "The rate of pressure reduction must be restricted in order to avoid any
foaming problems; however, it was observed that rates of pressure reduction
on the order of 30 to 40 bar to the hour did not lead to any particular
problem" (col. 5, 11. 54--58).
The Appellants state that "Shida, teaches the temperature range of the
condenser to be from 50 to 140QC, preferably 95-120QC ([0020]). Due to the
allowance of such a wide temperature range, Appellants submit that Shida
does not disclose or suggest the element of the present invention where the
diamine addition time is very short and a good molar balance of reactants is
retained" (App. Br. 5).
The Appellants' Specification states that "[p ]referably, the time to be
taken for addition of the diamine component is from 30 minutes to 4 hours,
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more preferably from 60 minutes to 2 hours" (Spec. 12). Shida's
exemplified diamine addition time range is 3--4 hours (i1i127, 31, 34 ). Shida,
however, is not limited to its examples. See In re Fracalossi, 681 F.2d 792,
794 n.1(CCPA1982); In re Mills, 470 F.2d 649, 651(CCPA1972).
Instead, all disclosures therein must be evaluated for what they would have
fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d
961, 965 (CCPA 1966). Shida discloses that the diamine "addition speed is
adjusted timely" (i-f 14), and Miyamoto indicates, for the type of method
carried out by Shida, i.e., making polyamide by reacting a diamine with a
dicarboxylic acid in a molten state in the absence of a solvent in a batch
reactor, the diamine addition time "is generally in the range of 0.5 to
10 hours" (col. 3, 11. 63---63). Miyamoto, therefore, would have provided one
of ordinary skill in the art with a reasonable expectation of success in using a
diamine addition time as low as 0.5 hours in Shida's method. See In re
O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988) ("Obviousness does not
require absolute predictability of success .... For obviousness under§ 103,
all that is required is a reasonable expectation of success"). As for the molar
balance, the Appellants point out that their exemplified molar balances are
0.993---0.995 (App. Br. 10-11). Shida's exemplified molar balances are
0.987, 0.997, 0.998 and 1.000 due to prevention of sublimed dicarboxylic
acid deposit accumulation on partial condenser tubes (i1i124, 27-29, 34).
That deposit accumulation prevention is dependent upon proper partial
condenser temperature control (i-fi-f 16, 20). Because the Appellants and
Shida have similar molar balances which dependent upon proper partial
condenser temperature control, it appears that the partial condenser
temperatures in Shida' s method using Miyamoto' s diamine addition time
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would include values in Shida's 50-150 QC range (i-f 16) that are within the
Appellants' partial condenser temperature range (water dew point to water
dew point+ 5 QC) (Spec. 14).
The Appellants assert, in reliance upon the Declaration under
37 C.F.R. § 1.132 ofKatsumi Shinohara, that Shida's method cannot make
good quality polyamide without additional treatment to remove adhered
solids from the partial condenser (App. Br. 5---6).
Shida discloses that deposits can be removed from the partial
condenser between batches by use of steam or warm water (i-f 22;
Example 3), but Shida indicates that deposit removal also can be achieved
by proper condenser temperature control (i-fi-f 16, 20, 21, 24; Examples 1, 2).
The Appellants assert, in reliance upon the Polyamide Resin
Handbook, that using a relatively low pressure reduction rate of 0.3-
1.0 MPa/hr is contrary to conventional practice (App. Br. 7-8).
The Appellants do not establish that the aqueous solution process in
the Polyamide Resin Handbook indicates the conventional practice in the
applied references' solventless methods.
The Appellants assert that Vandevijver's 30-40 bar/hr (3--4 MPa/hr)
pressure reduction rate (col. 5, 1. 57) and exemplified 2.25 MPa/hr pressure
reduction rate (col. 6, 11. 26, 31-33) are significantly higher than the
Appellants' 0.3-1.0 MPa/hr pressure reduction rate (App. Br. 9).
That assertion is not supported by the Shinohara Declaration which
states that "the pressure-lowering speed can be controlled to be very fast,
and it is usually controlled to be fast such as Vandevijver (3 to 4 MPa/hr
(30-40 bar/hr) in col. 5, lines 54-58; and 2.25MPa/hr in Example 1 )"
(Deel. 4). Moreover, Vandevijver states that the 30-40 bar/hr pressure
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reduction rate did not cause a foaming problem, not that it is a minimum rate
(col. 5, 11. 54--58). Vandevijver, therefore, would have led one of ordinary
skill in the art, through no more than ordinary creativity, to use other
pressure reduction rates which do not cause a foaming problem, such as rates
within the Appellants' 0.3-1.0 MPa/hr range. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one
"can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ").
The Appellants assert that "Shida describes a preferable temperature
of an inner wall of vapor riser under atmospheric pressure ([0016] U.S.
2009/0299028) [Kikuchi], and a preferable temperature of an inner
temperature of the partial condenser under the atmospheric pressure
([0020]). These are different from the temperature of the vapor outlet port"
(Reply Br. 3).
Kikuchi does not include Shida as a named inventor and does not
indicate any relation to Shida, and the portions of Kikuchi referred to by the
Appellants are not relevant to the Appellants' points. Thus, the Appellants'
reliance upon Kikuchi is not well taken. Also, there does not appear to be a
significant difference between partial condenser tube temperature and vapor
outlet temperature, and the Appellants do not provide evidence to the
contrary.
The Appellants assert that "Shida does not teach nor suggest to apply
pressure in order to suppress foaming of the reaction mixture and shorten a
drop time" (Reply Br. 4).
Establishing a prima facie case of obviousness does not require that
references solve the same problem solved by Appellants. See In re Kemps,
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97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane);
In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). Shida uses pressures
(0.4 MPaG or less (i-f 14)) within the Appellants' range (0.1---0.4 MPaG), and
as pointed out above, Miyamoto would have suggested, to one of ordinary
skill in the art, diamine addition times within the Appellants' range (30-
150 minutes).
Thus, we are not persuaded of reversible error in the rejection.
DECISION/ORDER
The rejection of claims 1, 5, 6, 8-17, and 19 under 35 U.S.C. § 103
over Shida in view of Kurose, Miyamoto and Vandevijver is affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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