Ex parte Pitchai et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08138780 (B.P.A.I. Jun. 29, 1998)

Application for patent filed October 18, 1993.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RANGASAMY PITCHAI
and
THOMAS S. ZAK
__________
Appeal No. 95-3754
Application 08/138,7801
___________
ON BRIEF
___________
Before GARRIS, PAK and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow claims 1-20 as amended
after final rejection. These are all of the claims in the application.
THE INVENTION
Appeal No. 95-3754
Application 08/138,780
Citations herein are to the English translation of this reference, which is of2
record.
2
Appellants claim a process for making a mixture of 1,4-butanediol and 2-methyl-
1,3-propanediol which contains less than specified amounts of tetrahydrofuran and
isobutyl alcohol. The product is formed by hydrogenating an aqueous mixture of 4-
hydroxybutanal and 3-hydroxy-2-methylpropanal in the presence of a catalyst which
consists essentially of platinum and ruthenium on (-alumina. Claim 1 is illustrative and
reads as follows:
1. A process which comprises hydrogenating an aqueous mixture of 4-
hydroxybutanal and 3-hydroxy-2-methylpropanal in the presence of a catalyst system
that consists essentially of platinum and ruthenium supported on (-alumina to produce
1,4-butanediol, 2-methyl-1,3-propanediol, less than about 0.1 moles of tetrahydrofuran
per mole of 1,4-butanediol, and less than about 0.1 moles of isobutyl alcohol per mole
of 2-methyl-1,3-propanediol.
THE REFERENCE
Stemmler et al. (Stemmler) 0,007,101 Jan. 23, 19802
(European patent)
THE REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Stemmler.
Appeal No. 95-3754
Application 08/138,780
3
OPINION
We have carefully considered all of the arguments advanced by appellants and
the examiner and agree with appellants that the aforementioned rejection is not well
founded. Accordingly, this rejection will be reversed.
Stemmler discloses a process for making low molecular weight polyalcohols by
catalytic hydrogenation of what Stemmler calls “formose”, which is a mixture of various
low molecular weight hydroxyaldehydes, hydroxyketones and possibly multivalent
alcohols, which result from the self condensation of formaldehyde (page 2). The
formose can be mixed with sugars, aldehydes, ketones, alkanals or alcohols (pages 11-
12). The hydrogenation catalyst preferably is ruthenium (page 10), and can be mixed
with a co-catalyst which can be, inter alia, platinum (page 14). The catalyst carrier can
be either inorganic or organic, and the listed carriers include aluminum oxide (page
15).
The examiner argues that appellants’ starting materials and those of Stemmler
are analogous and that both processes produce the same kinds of products (answer,
pages 3-4). Thus, the examiner argues, in reliance upon In re Durden, 763 F.2d 1406,
226 USPQ 359 (Fed. Cir. 1985), appellants’ claimed process would have been obvious
to one of ordinary skill in the art over Stemmler (answer, pages 3-4).
The examiner reached his conclusion of obviousness of appellants’ claimed
invention based on a per se rule that use of a new starting material in a prior art
Appeal No. 95-3754
Application 08/138,780
4
process would have been obvious to one of ordinary skill in the art. As stated by the
Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir.
1995), “reliance on per se rules of obviousness is legally incorrect and must cease.”
The court further stated:
Mere citation of Durden, Albertson, or any other case as a basis for
rejecting process claims that differ from the prior art by their use of
different starting materials is improper, as it sidesteps the fact-
intensive inquiry mandated by section 103. In other words, there
are not “Durden obviousness rejections” or “Albertson obviousness
rejections,” but rather only section 103 obviousness rejections. 71
F.3d at 1570, 37 USPQ2d at 1132.
When an examiner is determining whether a claim should be rejected under 35
U.S.C. § 103, the claimed subject matter as a whole must be considered. See Ochiai,
71 F.3d at 1569, 37 USPQ2d at 1131. The subject matter as a whole of process claims
includes the starting materials and product made. When the starting and/or product
materials of the prior art differ from those of the claimed invention, the examiner has the
burden of explaining why the prior art would have motivated one of ordinary skill in the
art to modify the materials of the prior art process so as to produce the particular
product recited in appellants’ claims. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at
1131.
The examiner argues that one of ordinary skill in the art would have been
motivated to use appellants’ starting materials due to the reasonable expectation of
obtaining the corresponding known useful product (answer, page 4). The examiner has
Appeal No. 95-3754
Application 08/138,780
5
provided no evidence, however, that the product recited in appellants’ claims was
known.
In order for a prima facie case of obviousness of appellants’ claimed invention
to be established, the prior art must be such that it would have provided one of ordinary
skill in the art with both a suggestion to carry out appellants’ claimed process and a
reasonable expectation of success in doing so. See In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“Both the suggestion and the expectation of
success must be founded in the prior art, not in the applicant’s disclosure.”). The mere
possibility that the prior art could be modified such that appellants’ process is carried
out is not a sufficient basis for a prima facie case of obviousness. See In re Brouwer,
77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); Ochiai, 71 F.3d at 1570, 37
USPQ2d at 1131.
The examiner has not explained, and we do not independently find, where
Stemmler would have provided one of ordinary skill in the art with a suggestion to
hydrogenate the particular starting material recited in appellants’ claims such the
product recited in the claims is formed. Thus, we conclude that the examiner has not
carried his burden of establishing a prima facie case of obviousness of appellants’
claimed invention.
DECISION
Appeal No. 95-3754
Application 08/138,780
6
The rejection of claims 1-20 under 35 U.S.C. § 103 as being unpatentable over
Stemmler is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-3754
Application 08/138,780
7
Jonathan L. Schuchardt
Arco Chemical Company
3801 West Chester Pike
Newtown Square, PA 19073