Ex parte MAKI

Board of Patent Appeals and Interferences

Feb 24, 1998

07924606 (B.P.A.I. Feb. 24, 1998)

Application for patent filed July 27, 1992. According to1
appellant, this application is a continuation of application
07/668,474, filed March 13, 1991, which is a continuation of
07/501,763, filed March 30, 1990, now abandoned.
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(2) is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HITOSHI MAKI
__________
Appeal No. 95-0262
Application 07/924,6061
__________
HEARD: Feb. 6, 1998
__________
Before MARC L. CAROFF, EDWARD C. KIMLIN and JOHN D. SMITH,
Administrative Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the final
rejection of claims 6, 7, and 10 through 14.
Appeal No. 95-0262
Application 07/924,606
Tetralin® is a registered tradename for 1, 2, 3,4-Tetra-2
hydronaphthalene. See The Merck Index, 12th Edition, p 1575,
©1996, copy attached.
2
The subject matter on appeal is directed to a process for
the production of 2, 2'-dichlorohydrazobenzene via the catalytic
reduction of o-chloronitrobenzene with hydrogen in a sodium
hydroxide or potassium hydroxide aqueous solution and in the
presence of a platinum catalyst and a quinoid compound co-
catalyst. Importantly, the reduction reaction takes place in the
presence of tetralin . Independent claim 14 is representative of2
the claims on appeal and is reproduced below:
14. A process for the production of
2,2'dichlorohydrazobenzene, which comprises
catalytically reducing o-chloronitrobenzene with
hydrogen in a sodium hydroxide or potassium hydroxide
aqueous solution and tetralin in the presence of
platinum-carbon support catalyst or a palladium-carbon
support catalyst and a quinoid compound cocatalyst
having a basic skeleton formed of 1 to 3 aromatic rings
at a high temperature under a high pressure.
The references of record relied upon by the examiner are:
Werner et al. (Werner) 3,156,724 Nov. 10, 1964
Wollensak 3,931,298 Jan. 06, 1976
Planker et al. (Planker) 4,217,307 Aug. 12, 1980
Herrmann 4,326,078 Apr. 20, 1982
Mestroni EP 0 91 383 Dec. 10, 1983
(European Patent)
Appeal No. 95-0262
Application 07/924,606
3
The appealed claims stand rejected under 35 U.S.C. § 103 in
view of the above references.
We reverse.
The examiner’s prima facie case of obviousness is predicated
on the contention that it would have been obvious to substitute
tetralin for the organic solvents, particularly cyclohexane,
utilized in the process of Herrmann, which process, according to
the examiner, corresponds identically to the claimed process with
the exception of the requirement regarding tetralin. In support
of his conclusion, the examiner further states that cyclohexane
and tetralin are taught to be interchangeable as reducing agents
in an “analogous” process described in Wollensak and are
therefore expected to be equally useful in the catalytic
hydrogenation of nitrobenzene, “which in turn has shown to be
promoted by the employment of a reducing agent” as described in
Mestroni. See the examiner’s answer at page 5.
Although the examiner’s rejection is not without merit, we
agree with appellant that a prima facie case of obviousness has
not been established for the claimed process herein. That
Wollensak discloses the use of reducing solvents such as
cyclohexane and tetralin for the reduction of an hydroxy aromatic
material to its corresponding cyclohexanone does not, by itself,
Appeal No. 95-0262
Application 07/924,606
4
either teach or provide a reasonable expectation that cyclohexane
and tetralin are equivalent reducing solvents for the catalytic
reduction of o-chloronitrobenzene to produce 2, 2'-dichlorohydra-
zobenzene as claimed herein. Absent the disclosure of the
present invention, Wollensack’s teachings would not have
suggested to one of ordinary skill in the art the proposed
modification of the Herrmann method. This is because, in our
view, the reactions in question are too dissimilar.
We also observe, as emphasized by appellant, that Herrmann
requires organic solvents which are inert to the action of
hydrogen under the Herrmann reaction conditions. See Herrmann at
column 3, lines 5 through 40, particularly, lines 6 and 7. In
contrast, the organic solvent required for the presently claimed
process, tetralin, reacts with hydrogen. Indeed, because of the
presence of a reducing catalyst in the claimed reaction system,
part of the tetralin solvent is advantageously reduced by
hydrogen to produce a mixture of tetralin and decalin.
Generally, see the specification at pages 10 and 11.
For the reasons stated above, we agree with appellant that a
prima facie case of obviousness has not been established for the
subject matter defined by the claims on appeal. This being the
Appeal No. 95-0262
Application 07/924,606
5
case, we do not find it necessary to further consider the
comparative data of record in the Rule 132 declarations referred
to in appellant’s briefs..
The decision of the examiner is reversed.
Reversed
MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
EDWARD C. KIMLIN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN D. SMITH )
Administrative Patent Judge )
Appeal No. 95-0262
Application 07/924,606
6
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