Ex Parte Mori et al

Patent Trial and Appeal Board

Jun 23, 2016

12096207 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/096,207 06/05/2008
23373 7590 06/27/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Y asuhiko Mori
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.
Ql08518 9732
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUHIKO MORI
and NORIHITO OMOTO
Appeal2014-004824
Application 12/096,207
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
JEFFERY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-3 under 35 U.S.C. § 103(a) as unpatentable
over Walsdorff et al. (PCT WO 2004/037718, published May 6, 2004)
(using Walsdorff et al. US 2006/0099138, published May 11, 2006, as the
unofficial English translation) (hereinafter Walsdorft) in view of Breuer et
al. (US 2004/0141901, published Jul. 22, 2004) (hereinafter Breuer),
Appeal2014-004824
Application 12/096,207
optionally further in view of JP '614 (Japan Patent 2005-177,614, published
Dec. 19, 2003). 1
An oral hearing was conducted on June 14, 2016. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal (emphasis
added):
1. A process for producing chlorine, using hydrogen
chloride as a raw material that is a by-product of synthesis of
isocyanate by reacting phosgene and primary amine and
oxidizing the hydrogen chloride through a catalytic gas phase
reaction in the presence of a catalyst, wherein a sulfur content
in carbon monoxide employed as a raw material for the
phosgene is set to not more than 2000 vol. ppb without
performing water absorption and stripping of hydrogen
chloride.
Appellants' arguments focus on all the claims as a group; they do not
argue any of the claims separately. Reply Br. 4-7. Accordingly, claims 1-3
stand or fall together.
ANALYSIS
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we find that a preponderance of the evidence on
this record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103(a) rejection essentially for the reasons set out by the
Examiner in the Answer.
1 The Examiner withdrew the rejection of claims 1-3 under 35 U.S.C. § 112,
second paragraph, in the Answer. Ans. 4. Accordingly, this rejection is not
before us for review on appeal.
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Appeal2014-004824
Application 12/096,207
We add the following primarily for emphasis.
Independent claim 1 is directed to a method of producing chlorine
using carbon monoxide having no more than 2000 vol. ppb of sulfur and
without performing a water absorption and stripping of hydrogen chloride in
order to remove the sulfur from the carbon monoxide. 2 Claim 1; Spec. 3;
Ans. 12.
The Examiner found that W alsdorff discloses a method of
synthesizing chloride that includes most of the steps of claim 1 (Final Act. 4,
5; Ans. 6, 7; Walsdorff i-fi-152-63) but is silent as to the sulfur content in the
carbon monoxide. Ans. 8. While Walsdorff may include a water absorption
and stripping step for removing impurities, W alsdorff also states that there
are also other means of removing impurities from the process. Walsdorff i1i1
27, 7 6; Final Act. 4; Ans. 7. The Examiner found that Breuer discloses that
one skilled in the art would know (a) sulfur removal from carbon monoxide
early on being preferable and (b) a way to remove sulfur from carbon
monoxide. Final Act. 6; Ans. 8-9; Breuer e.g., i1i12, 10. Additionally, the
Examiner found that JP '614 describes "the desire to produce chlorine with
low sulfur content and the presence of sulfur component is undesirable in a
process for producing chlorine from hydrogen chloride and oxygen" (Final
Act. 8) and also describes an alternate way to do so other than water
absorption and stripping to remove sulfur from hydrogen chloride. Final
Act. 8; Ans. 10; JP '614 Abstract.
2 The claim construction done by the Examiner that the water absorption and
stripping step applies only to the removal of sulfur and not to other
impurities is reasonable. Appellants' representative also did not dispute this
claim interpretation during the oral hearing.
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Appeal2014-004824
Application 12/096,207
The Examiner concluded that it would have been obvious to one
skilled in the art to modify W alsdorff' s method to use the purified carbon
monoxide of Breuer, and optionally to remove any further sulfur content via
the process exemplified in JP '614, because removing sulfur from the
process was known to be desirable and both Breuer and JP '614 show a way
to accomplish that without the water absorption and stripping step. Final
Act. 8-9; Ans. 11-18.
Appellants' principal argument is that the Examiner used improper
hindsight to modify W alsdorff with Breuer and JP '614 because there is no
reason for one of ordinary skill in the art to combine these teachings. App.
Br. 4-7. Additionally, Appellants contend that even ifWalsdorffwere
combined with Breuer and JP '614, one of ordinary skill in the art would not
have arrived at the claimed invention, because the combined process would
still include water absorption and stripping of hydrogen chloride. Reply Br.
4; App. Br. 14-15.
After full consideration of Appellants' arguments (id.) and of the
evidence on this record, we are unpersuaded of error in the Examiner's
determination of obviousness. It has been established that "the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
see also In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom).
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Appeal2014-004824
Application 12/096,207
A person of ordinary skill in the art would have known that sulfur is
an impurity in carbon monoxide and that it should be removed during
processes involving carbon monoxide as exemplified by the teachings in
Breuer and JP '614. Breuer i-f2; JP '614 Abstract. Breuer teaches that the
removal of sulfur from carbon monoxide is important in phosgene and
downstream synthesis, but not explicitly for chlorine synthesis. Breuer i12.
However, one skilled in the art would have known that using carbon
monoxide to make phosgene is also precursor step in chlorine synthesis
based on the teachings in Walsdorff. Ans. 9. Since Breuer teaches that
sulfur impurities should be removed at the phosgene synthesis step, then a
person of ordinary skill in the art using no more than ordinary creativity
would reasonably expect combining Breuer with the overall process in
Walsdorff to make clean phosgene to be later used in the synthesis of
chlorine would have resulted in a cleaner, more efficient reaction. Id. As
the Examiner aptly points out, it would have been obvious to one of ordinary
skill in the art using ordinary creativity would not have used the water
absorption and stripping step to remove sulfur impurities when such
impurities are no longer present as a result of using a purified carbon
monoxide source per teachings of Breuer. Id.
The Applicants' argument that one of ordinary skill in the art would
not have combined Breuer with Walsdorff is not convincing. Reply Br. 4-7.
Applicants argue that the Walsdorff process requires the use of the water
absorption and stripping step to remove impurities from hydrogen chloride,
one of the intermediate compounds used in chlorine production. Reply Br.
6. However, as the Examiner points out, Walsdorff is silent on specifically
removing sulfur from the reaction, and also teaches there are other ways to
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Appeal2014-004824
Application 12/096,207
remove various impurities from the process, such as adsorption, distillation,
and extraction. Ans. 6-8; Walsdorff i-fi-126, 76. For example, the method
disclosed in JP '614 is a method for removing sulfur from hydrogen chloride
without using water absorption. Ans. 10; JP '614 Abstract.
Thus, on this record, Appellants have not shown error in the
Examiner's determination that one of ordinary skill in the art, using no more
than ordinary creativity, would have used sulfur-free carbon monoxide from
Breuer in the chlorine synthesis steps of W alsdorf or that one skilled in the
art would have known of alternative ways of eliminating sulfur from
hydrogen chloride (as necessary) prior to chlorine synthesis, such as the
method in JP '614, without using the water absorption and stripping step
excluded in claim 1.
Accordingly, we affirm the Examiner's prior art rejection of claims 1-
3 under 35 U.S.C. § 103(a) for the reasons given above and presented by the
Examiner.
DECISION
The Examiner's prior art rejection is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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