Ex parte Weber et al.

Board of Patent Appeals and Interferences

Feb 26, 1998

08071690 (B.P.A.I. Feb. 26, 1998)

Application for patent filed January 28, 1993. According to1
applicants, this application is a continuation of Application 07/788,548,
filed November 6, 1991 (abandoned).
1
Paper No. 14
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JURGEN WEBER,
DETLEF KAMPMANN,
DETLEF DEYMANN AND
CLAUS KNIEP
______________
Appeal No. 94-3251
Application 08/071,690 1
_______________
HEARD: FEBRUARY 3, 1998
_______________
Before Ronald H. Smith, Weiffenbach, and Pak, Administrative
Patent Judges.
Ronald H. Smith, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-22,
all the pending claims in the application.
Appeal No. 94-3251
Application 08/071,690
2
The subject matter of the appealed claims relates to a two-
step process for the preparation of an amine. Claim 1, the only
independent claim, is illustrative of the appealed claims and
reads as follows:
1. A process for the preparation of an amine of the formula
CH -NH-CH -R, wherein R is an aliphatic radical having 1 to 33 2
carbon atoms, comprising a first reaction of an aldehyde of the
formula R-CHO with an amine of the formula R'-NH , wherein R' is2
a straight or branched chain aliphatic radical having 6 to 12
carbon atoms, to produce a Schiff base and water of reaction,
removal of said water, and a second reaction of said base with
methylamine and hydrogen in the presence of a hydrogenation
catalyst.

As indicated on page 3 of appellants' brief, the claims
stand or fall together. Accordingly, we will limit our
consideration to claim 1 in considering the examiner's rejection
of the appealed claims.
The reference relied on by the examiner is :
Terada 44-20322 (Japan) September 2, 1969
Claims 1-22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Terada. We have carefully considered
appellants' position as set forth in the appeal brief and the
examiner's position as set forth in his answer, and we have
decided that we will not sustain the rejection.
Appeal No. 94-3251
Application 08/071,690
Terada does disclose on page 4 that with the primary amines formed as2
raw materials, "secondary or tertiary amines could be manufactured arbitrarily
by reacting with organic carbonyl compounds and by hydrogenation." This is
the process disclosed by appellants as the prior art process for preparing
secondary amines.
3
Appealed claim 1 is drawn to a process for preparing a
secondary amine comprising a first reaction of an aldehyde and
a primary amine to produce a Schiff base and water, and after
removing the water, a second reaction of the Schiff base with
methylamine and hydrogen in the presence of a hydrogenation
catalyst. As disclosed in appellants' specification, the claimed
process for producing secondary amines results in a reduction of
undesired by-products and an increased yield compared to prior
art processes for producing secondary amines.
The Terada reference relied on in the examiner's rejection
is directed to a two-step process for preparing primary amines.
As pointed out by appellants on page 2 of their brief, there is
no teaching in the Terada reference of a reaction to form a
secondary amine as in the appellants' process. Terada's process2
involves a first reaction of an aldehyde and a primary amine to
form a Schiff base, and a second reaction in which the Schiff
base is hydrogenated in the presence of ammonia and a catalyst.
The examiner urges on page 4 of his answer that the Terada
process is analogous to the process of claim 1 and differs in
Appeal No. 94-3251
Application 08/071,690
4
that claim 1 reacts the Schiff base with methyl amine and
hydrogen, whereas Terada hydrogenates the Schiff base in the
presence of ammonia. Thus, the examiner urges that appellant
"has employed a methyl homolog of the prior art starting
material, and obtained the expected corresponding homologous
final product."
We disagree with the examiner's assertion that methyl amine
is a methyl homolog of ammonia. Adjacent methyl homologs are
organic compounds that are members of a homologous series of
compounds where each compound differs successively by a methylene
group (CH ). In re Henze, 181 F.2d 196, 85 USPQ 261 (CCPA 1950);2
In re Jones, 149 F.2d 501, 65 USPQ 480 (CCPA 1945). Ammonia is
an inorganic compound and is not part of a homologous series of
organic compounds in our view. As pointed out by appellants on
page 8 of their brief, the properties of ammonia are signifi-
cantly different from those of organic amines, such that one of
ordinary skill in the art would not expect that methyl amine
would behave similarly to ammonia. The examiner has presented
no evidence that one of ordinary skill in the art would have been
motivated to modify the Tereda process of making primary amines
Appeal No. 94-3251
Application 08/071,690
5
by substituting a methyl amine for ammonia in the hydrogenation
reaction. Accordingly, it is our view that the examiner has not
established a prima facie case of obviousness.
The decision of the examiner is reversed.

REVERSED
Ronald H. Smith )
Administrative Patent Judge )
)
)
)
Cameron Weiffenbach ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Chung K. Pak )
Administrative Patent Judge )

Appeal No. 94-3251
Application 08/071,690
6
Charles A. Muserlian
c/o Bierman and Muserlian
600 Third Avenue
New York, NY 10016
RHS/cam