Ex parte Mylroie

Board of Patent Appeals and Interferences

Mar 31, 1998

07982141 (B.P.A.I. Mar. 31, 1998)

Application for patent filed November 25, 1992. 1
According to appellant, this application is a continuation of
Application No. 07/473,006, filed January 31, 1990, now
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journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte VICTOR L. MYLROIE
________________
Appeal No. 94-2033
Application No. 07/982,1411
________________
ON BRIEF
________________
Before WINTERS, WILLIAM F. SMITH and GARRIS, Administrative
Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting
claims 1 through 13, which are all of the claims in the
application.
REPRESENTATIVE CLAIMS
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Application No. 07/982,141
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Claims 1 and 8, which are illustrative of the subject matter
on appeal, read as follows:
1. A method of producing aromatic primary amines of the
formula R-Ar-NH which comprises catalytically hydrogenating an2
aromatic nitro compound of the formula R-Ar-NO which is derived2
from a sulfur-containing compound which is contaminated with
sulfur, the hydrogenation being carried out in the presence of a
chromium-containing Raney cobalt catalyst and wherein R is a
radical selected from the group consisting of Het-, Het-NH-,
Het-Alk- and Het-Alk-O- and wherein Het- is a mono- or by-cyclic
nitrogen-containing unsaturated heterocyclic radical, Alk- being
a straight or branched chain alkylene radical of up to about 15
carbon atoms and -Ar- being a phenylene or a naphthylene radical.
8. A method according to claim 1 wherein the compound
R-Ar-NO is contaminated with from about 50 to 10,000 ppm of2
sulfur.
THE REFERENCES
The prior art references relied on by the examiner are:
Petro 3,997,478 Dec. 14, 1976
Lentz et al. (Lentz) 4,929,737 May 29, 1990
(filed Feb. 3, 1988)
Leopold Horner et al. (Horner), Chemical Abstract 105:114375t,
"Hydrogen transfer. 73. Hydrogenolysis studies of sulfur and
phosphorus compounds with Raney nickel," 105 General Organic
Chemistry 615 (1986).
THE ISSUE
The sole issue presented is whether the examiner erred in
rejecting claims 1 through 13 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Lentz, Horner and
Petro. According to the examiner, the Lentz patent constitutes
Appeal No. 94-2033
Application No. 07/982,141
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legally available prior art in view of its February 3, 1988,
filing date.
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials: (1) the instant
specification, including all of the claims on appeal; (2)
appellant's Appeal Brief and Reply Brief; (3) the Examiner's
Answer (Paper No. 23) and the Supplemental Examiner's Answer
(Paper No. 25); (4) the above-cited references relied on by the
examiner; (5) appellant's Rule 131 Declaration, executed
June 7, 1993; and (6) the opinion and decision entered by another
merits panel of the Board in parent application Serial No.
07/473,006, Paper No. 12 (Appeal. No. 92-0636, decided
September 25, 1992).
On consideration of the record, including the above-listed
materials, we reverse the examiner's rejection under 35 U.S.C.
§ 103.
DISCUSSION
We first observe appellant's argument that the Rule 131
Declaration, executed June 7, 1993, "precludes the use of the
Lentz et al. patent as 102(e) prior art" (Appeal Brief, page 6,
line 2). However, for the purposes of this appeal, we find it
unnecessary to reach that issue. We shall assume arguendo,
Appeal No. 94-2033
Application No. 07/982,141
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without deciding, that the Rule 131 Declaration does not
constitute sufficient evidence to antedate Lentz. Regardless, we
hold that the combined disclosures of Lentz, Horner and Petro are
insufficient to support a conclusion of obviousness of
appellant's claimed method.
Lentz here constitutes the closest prior art, and the Lentz
method bears close relationship to appellant's claimed method
except that appellant recites an aromatic nitro compound
"contaminated with sulfur" (independent claim 1). On its face,
the Lentz patent does not disclose or suggest nitro aromatic
reactants containing even trace amounts of sulfur.
In this regard, the previous merits panel recognized that
"the respective methods [Lentz and appellant] differ . . . in the
explicit statement of the present claims that the starting
material is contaminated with sulfur" (see parent application
Serial No. 07/473,006, Paper No. 12, page 3 (Appeal No. 92-0636,
decided September 25, 1992)). The previous panel made up that
difference or deficiency in Lentz by relying on the acknowledged
state of the prior art. According to the previous merits panel,
"appellant has admitted (specification, pages 1-2) that such
starting materials [aromatic nitro compounds of the type
disclosed by Lentz] are routinely contaminated with sulfur" and
"appellant admits that aromatic nitro compounds are routinely
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Application No. 07/982,141
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contaminated with sulfur." Again, see parent application Serial
No. 07/473,006, Paper No. 12, page 3. On this basis, the
previous merits panel concluded that appellant's claimed method
would have been obvious from a consideration of Lentz alone.
We have taken a step back and reevaluated the patentability
of appellant's claimed method, taking into account (1) the
disclosures of Lentz, Horner and Petro; (2) the statements in
appellant's specification relied on by the previous merits panel;
and (3) the vigorous arguments by appellant in this appeal that
the examiner and the previous merits panel "misconstrued . . .
the alleged admissions in applicant's specification" (Appeal
Brief, page 9, first full paragraph).
In the Background section of the specification, appellant
refers to
an obstacle to the economical synthesis of certain
aromatic amino compounds which are used for making dye-
forming couplers for color photography inasmuch as
their precursor nitro compounds are made from sulfur-
containing compounds. [Specification, page 1, lines 28
through 32, emphasis added].
Appellant does not acknowledge or admit that all aromatic amine
precursors are contaminated with sulfur, or that the nitro
aromatic reactants disclosed by Lentz are contaminated with
sulfur. Likewise, we have carefully reviewed the specification,
page 10, line 33 through page 11, line 21. Again, appellant does
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Application No. 07/982,141
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not acknowledge or admit that all aromatic amine precursors are
contaminated with sulfur, or that the nitro aromatic reactants
disclosed by Lentz are contaminated with sulfur. On the
contrary, appellant states that
[i]n the Lentz et al. application [now U.S. Patent No.
4,929,737] there is no disclosure of sulfur-
contaminated reactants. [Specification, page 11, lines
15 through 17].
All in all, we believe that the previous merits panel (1)
misinterpreted the acknowledged state of the prior art in
appellant's specification, and (2) relied on that interpretation
in affirming the rejection of the claimed method under 35 U.S.C.
§ 103 in view of the combined disclosures of Lentz, Horner and
Petro.
On this record, claims 1 through 13 define a novel
combination of steps, namely, the use of a starting material
containing a nitro aromatic compound and sulfur, and the use of a
chromium-containing Raney cobalt catalyst. Furthermore, on this
record, the claimed method would not have been obvious within the
meaning of 35 U.S.C. § 103 because the cited references provide
no reason, suggestion, or motivation to use appellant's chromium-
containing Raney cobalt catalyst as a solution to the problem of
sulfur poisoning. The cited prior art would not have led a
person having ordinary skill to select appellant's chromium-
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Application No. 07/982,141
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containing Raney cobalt catalyst, among many known hydrogenation
catalysts, to hydrogenate aromatic nitro compounds contaminated
with sulfur. Compare In re Sponnoble, 405 F.2d 578, 585, 160
USPQ 237, 243 (CCPA 1969) (A patentable invention may lie in the
discovery of the source of a problem even though the remedy may
be obvious once the source of the problem is identified.)
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
Appeal No. 94-2033
Application No. 07/982,141
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Robert A. Gerlach
Eastman Kodak Co.
343 State St.
Rochester, NY 14650-2201