Ex Parte Marhold et al

Board of Patent Appeals and Interferences

May 9, 2012

10703835 (B.P.A.I. May. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ALBRECHT MARHOLD and AXEL PLESCHKE
__________

Appeal 2011-011732
Application 10/703,835
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a process for preparing polyhaloalkylaryls. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 1-19 are on appeal. Claim 1 is representative and it defines a
“[p]rocess for preparing compounds of the formula (I) . . . comprising,
reacting compounds of formula (II)

. . .
with compounds of formula (III)

in which . . . Hal is bromine or chlorine, wherein the reaction is effected
 in a multiphasic reaction medium which has one aqueous phase and
 at least one organic phase,
 in the presence of phase transfer catalyst and
 in the presence of a reducing agent and/or light having a wavelength
of 400 nm or less.” (Emphasis added.)

The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) as
unpatentable over Onishi (US 6,600,074 B2, July 29, 2003).

OBVIOUSNESS
The Issue
The Examiner’s position is that Onishi taught reacting anilines
(compounds of formula (II)) with perfluoroalklyl iodides (corresponding to
compounds of formula (III) with a different “Hal”) in a biphasic system in
the presence of a reducing agent, thus producing compounds of formula (I).
(Ans. 3.) The Examiner found “[t]he instant claims differ by being directed
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to the use of perfluoroalkyl bromides or perfluoroalkyl chlorides,” where
Onishi used perfluoroalkyl iodides. (Id.) The Examiner concluded that
“[s]ubstituting perfluoroalkyl bromides and/or perfluoroalkyl chlorides for
perfluoroalkyl iodides is prima facie obvious absent a showing of
unexpected results.” (Id.)
Appellants state that “the present claims differ from what is disclosed
in Onishi at least by the fact that instead of a perfluoroalkyl iodide, as
disclosed in Onishi, different alkylating agents, i.e. alkyl bromides and alkyl
chlorides are featured in the instant process.” (App. Br. 11.) However,
Appellants also contend that another difference is that “the reaction
according to the present invention proceeds with high yields as evidenced by
the examples presented in the application.” (Id. at 12.)
Appellants argue that “a person skilled in the art could not be
motivated to modify the reaction set forth in Onishi such that it is suitable
with perfluoroalkyl bromides and chlorides.” (Id.) According to Appellants,
(i) “Onishi solely discloses the use of perfluoroalkyl iodides,” (ii) “does not
disclose the instantly featured perfluoroalkyl bromides or chlorides,”
(iii) “does not allow for the use of other halides,” and (iv) “deliberately
limited the perfluoroalkyl to iodide.” (Id.) Further, because Onishi “states
in the background the problems associated with using other various
perfluoroalkyl halides, i.e., not useful in practice, very poor selectivity, low
practical usefulness, high temperatures, etc. See Onishi, column 2, lines 22 -
column 3, line 4” “Onishi specifically teaches away from the use of other
halogen based perfluoroalkyls.” (Id at 13.)
Appellants argue that “markedly high steric control for alkyl chlorines
and alkyl bromines would be surprising . . . and contrary to accepted
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wisdom.” (Id. at 14.) Appellants also argue that “yields according to the
present invention would be unexpected in view of the teachings of Onishi.”
(Id. at 15.)
The Examiner responds that the disclosures Appellants cite do not
support finding that the prior art taught away from using perfluoroalkyl
bromides or chlorides or would have discouraged their use. (Ans. 5-9.) The
Examiner analyzed each of Appellants’ arguments but found them
unpersuasive. The Examiner also responds that the reasonable expectation
of success of using the bromine or chlorine version of Onishi’s iodine
perfluoroalkyls is not defeated even if the expectation would have been
lower selectivity or higher by-product formation. (Id. at 9.)
The issues with respect to this rejection are:
whether the evidence supports finding that the prior art taught away
from using perfluoroalkyl bromide or chloride; and, if not,
whether Appellants provided evidence of unexpected results sufficient
to establish nonobviousness.

Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the prior art.

Principles of Law
A prior art reference is said to teach away from an Applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
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applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
“Attorney’s argument in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997) (same).

Analysis
Based on the evidence cited in the rejection, and the Examiner’s
reasoning, we conclude that the rejection established a prima facie case for
obviousness. Further, the Examiner responded specifically and persuasively
to Appellants’ arguments, showing that when all the evidence is considered,
it weighs in favor of obviousness. (See Ans. 5-9.) The Examiner’s factual
positions are consistent with the evidence, and the Examiner’s responses are
thorough, reasonable, and consistent with precedent. See, e.g., Gurley, 27
F.3d at 553; Fulton, 391 F.3d at 1201; Baxter Travenol, 952 F.2d at 392.
We therefore adopt the Examiner’s responses to Appellants’ arguments as
our own and affirm the rejection.
Claims 2-19 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2011-011732
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SUMMARY
We affirm the rejection of claims 1-19 under 35 U.S.C. § 103(a) as
unpatentable over Onishi.
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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