Ex Parte Narita et alDownload PDFPatent Trial and Appeal BoardSep 6, 201611615367 (P.T.A.B. Sep. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111615,367 12/22/2006 826 7590 09/08/2016 ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 FIRST NAMED INVENTOR Mitsuo Narita 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. 035576.321349 1791 EXAMINER WHITE, EVERETT ART UNIT PAPER NUMBER 1672 NOTIFICATION DATE DELIVERY MODE 09/08/2016 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITSUO NARIT A, MASAKI T ABAT A, ATSUSHI YOSHIDA, and HIROSHI UMEZAWA 1 Appeal2015-000975 Application 11/615,367 Technology Center 1600 Before JEFFREYN. FREDMAN, RICHARD J. SMITH, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of preparing cellulose ether, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE Methods for preparing cellulose ether from pulp that involve first preparing an alkali cellulose by reacting the pulp with an alkali solution then subsequently reacting the alkali cellulose with an etherifying agent are 1 Appellants identify the Real Party in Interest as Shin-Etsu Chemical Co., Ltd. (Appeal Br. 1.) Appeal2015-000975 Application 11/615,367 known. (Spec. 1--4.) According to the Specification, some of the prior art processes result in water insoluble portions of cellulose ether caused by uneven alkali distribution in the alkali cellulose, which results in a portion of the cellulose ether having a low degree of substitution. (Id.) In other prior art processes, where alkali distribution is not problematic, "the method needs huge equipment and many operations .... [and] reaction efficiency of the etherifying agent is reduced" because at least some of the hydrophilic solvent used to remove the alkali in a washing step "remains in the alkali cellulose and causes a side reaction with an etherifying agent." (Spec. 4.) Moreover, according to the Specification, in that process "[ n ]eutralization of the washing liquid or recovery of the alkali is required [and] [ t ]hus, this method is industrially difficult." (Id.) Appellants' invention is directed to a method "for efficiently preparing alkali cellulose having a uniform alkali distribution." (Spec. 5.) Claims 5-8 and 10-122 are on appeal. Claims 5 and 6 are representative and reads as follows: 5. A method for preparing cellulose ether, comprising the steps of: bringing pulp into continuous contact with an alkali metal hydroxide solution in a screw conveyor contactor to generate a contact mixture; draining the contact mixture to separate alkali cellulose; and etherifying the alkali cellulose prepared in the draining step with an etherifying agent to produce cellulose ether. 2 Claim 9 is also pending, but stands withdrawn from consideration. (Ans. 3.) 2 Appeal2015-000975 Application 11/615,367 6. The method for preparing cellulose ether according to Claim 5, wherein a weight ratio of the alkali metal hydroxide contained by a cake obtained in the draining step to a solid portion contained by the pulp is 0.3 to 1.5. (Ans. 2; Adv. Act. 1-2.3) The following grounds of rejection by the Examiner are before us on review: Claims 5-8 and 10-12 under 35 U.S.C. § 103(a) as unpatentable over Wust, 4 Lindahl, 5 and Hilbig. 6 Claims 5-8 and 10-12 on the ground of non-statutory obviousness- type double patenting over claims 5-8 and 10-13 of copending Application No. 11/614,587 in view of Lindahl. DISCUSSION Claim 5 The Examiner finds that Wust discloses a method of refining cellulose with alkali for the "continuous production of alkyl cellulose" as recited in the instant claims. (Ans. 6.) In particular, the Examiner notes that Wust discloses a method for the continuous production of alkyl cellulose by treating alkali cellulose with alkylating agents in the presence of inert liquids wherein [powdered cellulose] is reacted with aqueous alcoholic alkali metal hydroxide solution to form alkali cellulose and the reaction mixture is reacted with 3 The Advisory Action is dated June 27, 2014, and notes the proposed amendment after final was entered. 4 Wust et al., US 4,339,574, issued July 13, 1982. 5 Lindahl et al., US 4,244,778, issued Jan. 13, 1981. 6 Hilbig et al., US 4,363,784, issued Dec. 14, 1982. 3 Appeal2015-000975 Application 11/615,367 at least a stoichiometric amount, based on the alkali metal hydroxide, of an alkylating agent in an inert liquid, the reaction being carried out continuously in stirred tanks-in-series with 2 to 10 units (see Abstract). (Final Action 5; Ans. 6.) The Examiner notes that Wust differs from the claimed invention in that it does not disclose preparation of products "in a screw conveyor contactor." (Ans. 7; Final Action 6.) The Examiner recognizes that the "cellulose powder being conveyed via a conveyor-type apparatus wherein methanolic sodium hydroxide is metered downstream and alkali cellulose is formed in a few seconds." (Ans. 8.) The Examiner finds that Lindahl discloses a cellulose pulp refining method that includes "bleaching and/or treating [the pulp] with alkali," such as "alkali metal hydroxide or sodium hydroxide," where the process uses a screw conveyor when pulp is contacted with sodium hydroxide, "thus suggesting that a screw conveyor can be used to prepare alkali cellulose." (Ans. 7 and 8.) The Examiner further finds that Hilbig shows "the use of a conveyor screw to prepare cellulose ethers is well known in the art." (Ans. 7; Final Action 6.) The Examiner contends that it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teaching of Wust with the teachings of Lindahl and Hilbig to use a screw conveyor where the cellulose pulp of Wust is contacted with the alkali metal hydroxide "since each of these documents disclose methods of refining cellulose with alkali and/or disclose preparation of cellulose ethers." (Ans. 7 and 8; Final Action 6.) 4 Appeal2015-000975 Application 11/615,367 We agree with the Examiner's conclusion that it would have been obvious to substitute a screw conveyor in the Wust method where the cellulose pulp of Wust is contacted with the alkali metal hydroxide. Appellants' argument that the rejection is in error because the Examiner has not provided sufficient explanation as to why one would replace piping in Wust with a train-of-buckets described in Lindahl (Reply Br. 6) is unavailing. Lindahl and Hilbig clearly teach that screw conveyors were known in the art to convey cellulose pulp to be treated with refinement chemicals including sodium hydroxide. (See, e.g., Lindahl 15:30-37, 17:23- 36, 1 :58---62, 3:8-13; Hilbig 2:48-3:3 (citing US 3,544,5567).) And Lindahl teaches that a screw conveyor provides adequate mixing to cellulose pulp in turbulent flow. (Lindahl 5:54--58; 15:30-37.) "Simple substitution of one known element for another" is obvious. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398. 416-17 (2007) (noting that "a 'patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.' Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152-153 (1950)," and "when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an 7 We note, but do not rely on, that US 3,544,556, issued Dec. 1, 1970, discloses that it was known to obtain "alkali cellulose prepared by mixing and reacting cellulose with sodium hydroxide solution in a double screw press as described in copending application Ser. No. 547,659, filed May 4, 1966." ('566 patent 3:50-54 (emphasis added).) 5 Appeal2015-000975 Application 11/615,367 arrangement, the combination is obvious. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)"). The Examiner provided the requisite articulated reasoning having a rational underpinning to support the conclusion of obviousness. Further, the fact that a "combination would not be made by businessmen for economic reasons [(Reply Br. 7)] does not mean that persons [of ordinary skill] in the art would not make the combination because of some technological incompatibility." In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). Only technological incompatibility is relevant. Id. Appellants argue that Lindahl' s use of a screw conveyor is in a process that is "drastically different than the process the cited piping is used for in Wust" because "[t]he screw conveyor is used to introduce steam to the mixture" not when sodium hydroxide is introduced and that "the use of sodium hydroxide [is] for a different purpose than that claimed." (Reply Br. 7-8.) Appellants also argue that Hilbig's mention of the use of the screw conveyor "is in reference to forming cellulose ether, not alkali cellulose." (Reply Br. 8.) None of those arguments, however, establish technological incompatibility. That there are differences in the refining processes of Lindahl, Hilbig, and Wust does not establish that the means of conveyance of pulp material combined with alkali metal hydroxide in Wust is not interchangeable with the screw conveyor taught by Lindahl and Hilbig to be known in the prior art. Appellants admit that in Lindahl the pulp that is conveyed to "the first stage 8," and via the use of a screw conveyor, contains a mixture of pulp and sodium hydroxide, among other things. (Reply Br. 8.) 6 Appeal2015-000975 Application 11/615,367 Furthermore, the prior art process referenced in Hilbig also, as Appellants admit (Reply Br. 8), discloses that the cellulose pulp transported with a screw conveyor includes cellulose pulp and alkali metal hydroxide, among other things. (Hilbig 2:65-3:3.) The differences noted by Appellants in the refinement process do not negate the equivalency position the Examiner made with respect to conveying cellulose pulp mixed with alkali metal hydroxide. Likewise, the fact that Lindahl mixes pulp with sodium hydroxide to remove alkali-hydrolyzable substances rather than to create alkali-cellulose does not show technological incompatibility of the use of a screw conveyor to convey the pulp that is being treated with sodium hydroxide over a continuous conveyance method disclosed in Wust. Thus, this argument also does not negate the equivalency position the Examiner made with respect to conveying cellulose pulp mixed with alkali metal hydroxide. We also disagree with Appellants' argument that the prior art teaches away from the substitution because Wust teaches "an object of this invention [is] to provide an improved method for the continuous production of alkyl cellulose" and Lindahl teaches the use of a screw conveyor is for use in a batch or semibatch process (Appeal Br. 28) and the actual process of Hilbig uses "a series of tubular reactors for etherifying alkali cellulose, rather than this conveyor screw" (Appeal Br. 29). "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, 391F.3d1195, 1201 (Fed. Cir. 2004). Appellants have not shown that a screw conveyor for 7 Appeal2015-000975 Application 11/615,367 conveying cellulose treated with alkali metal hydroxide as taught by Lindahl would not work successfully in the alkali cellulose refinement process of Wust. Moreover, that Hilbig's invention relies on a series of tubular reactors, does not establish that the prior art reference mentioned in Hilbig, and on which the Examiner relied, does not use a screw conveyor, nor does it discredit or criticize such use. To the extent that Appellants contend that a semibatch process using a screw conveyor would not work as well as a continuous process, we note that "just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Simple substitution of a known structure that achieves the expected results at issue here is merely "the work of the skillful mechanic, not that of the inventor." Sakraida, 425 U.S. at 279, 282. Thus, for the reasons discussed, Appellants do not persuade us that the Examiner erred in rejection claim 5 for obviousness over Wust and Lindahl. Claims 10-12, which depend directly from claim 5, have not been argued separately and therefore fall with claim 5. 37 C.F.R. § 41.37(c)(l)(iv). Claim 6 Regarding claim 6, the Examiner finds that Wust "discloses the molar ratio of sodium hydroxide to anhydroglucose between 1.5 and 5" and that "[t]his teaching of the Wust [] embraces the weight ratio of the alkali metal hydroxide contained by a cake to the solid portion contained by the pulp at 0.3 to 1.5" as claimed. (Ans. 9; Final Action 5.) We disagree with the Examiner's factual finding and conclusion of obviousness. 8 Appeal2015-000975 Application 11/615,367 As Appellants note "Wust does not teach a step of obtaining cake from draining alkali cellulose prior to etherification." (Appeal Br. 20.) Indeed, "Wust does not drain alkali cellulose once prepared, but rather, keeps the alkali cellulose in inert liquid to then pump the composition to the reaction system for etherification." (Id.; see, e.g., Wust 3:34---60 (noting that a suspension of cellulose powder is made by mixing it with toluene and that suspension is mixed with an aqueous/methanolic sodium hydroxide to generate alkali cellules which is degassed and dehydrate but remains as an alkali-cellulose toluene suspension that is pumped into a reaction system to which methyl chloride and ethylene oxide is added).) Thus, we agree with Appellants that Wust does not teach obtaining a cake and its disclosure of the molar ratio of sodium hydroxide to anhydroglucose is in regard to "the 'charge' or starting materials, not the resulting alkali cellulose" (Appeal Br. 20), much less a cake of alkali cellulose. We further agree with Appellants that Lindahl and Hilbig fail to remedy this deficiency (Appeal Br. 21 ); indeed, the Examiner does not rely on Lindahl or Hilbig for a disclosure which remedies the noted deficiency. For the reasons discussed, therefore, the Examiner has not established a prima facie case of obviousness of the method of claim 6 "wherein a weight ratio of the alkali metal hydroxide contained by a cake obtained in the draining step to a solid portion contained by the pulp is 0.3 to 1.5" and its dependent claim 7. Moreover, claim 8, which depends from claim 5, requires a method "wherein a weight ratio of alkali metal hydroxide contained by a cake obtained in the draining step to a solid portion contained by the pulp is 9 Appeal2015-000975 Application 11/615,367 controlled by changing at least one factor selected from .... " (Ans. 2-3 (emphasis added).) We agree with Appellants that Wust does not teach "a step of obtaining cake from draining alkali cellulose prior to etherification" (Appeal Br. 20), and the Examiner does not rely on Lindahl or Hilbig for a disclosure which remedies that deficiency. Therefore, the Examiner has not established a prima facie case of obviousness of the method of claim 8, which not only requires a cake be obtained in the draining step, but further requires the weight ratio of the alkali metal hydroxide in the cake to a solid portion contained by the pulp to be controlled in a particular manner. Obviousness-Type Double Patenting Appellants do not contest the provisional obviousness-type double patenting rejection. Therefore, we summarily affirm that rejection. SUMMARY We affirm the rejection of claims 5 and 10-12 under 35 U.S.C. § 103(a) as unpatentable over Wust, Lindahl, and Hilbig. We reverse the rejection of claims 6-8 under 35 U.S.C. § 103(a) as unpatentable over Wust, Lindahl and Hilbig. We affirm the rejection of Claims 5-8 and 10-12 on the ground of non-statutory obviousness-type double patenting over claims 5-8 and 10-13 of copending Application No. 11/614,587 in view of Lindahl. 10 Appeal2015-000975 Application 11/615,367 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). AFFIRMED 11 Copy with citationCopy as parenthetical citation