Ex Parte Eisenschmid et al

Patent Trial and Appeal Board

Nov 28, 2018

14111919 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/111,919 10/15/2013
29423 7590 11/30/2018
Husch Blackwell LLP/
The Dow Chemical Company
555 East Wells Street, Suite 1900
Milwaukee, WI 53202-3819
FIRST NAMED INVENTOR
Thomas C. Eisenschmid
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.
DOW-36803-A-US 5598
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
jere.polmatier@huschblackwell.com
pto-wis@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS C. EISENSCHMID, MICHAEL C. BECKER,
DONALD L. CAMPBELL JR., MICHAEL A. BRAMMER,
GLENN A. MILLER, EDWARD ADRIAN LORD,
JENS RUDOLPH, and HANS-RUDIGER REEH
Appeal2018-000962
Application 14/111,919 1
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY R. SNAY,
and JANEE. INGLESE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 4--7, 17-20 and 22. 2 We have jurisdiction under 35 U.S.C. § 6.
Appellants' invention relates generally to a method of preparing a
hydroformylation catalyst solution for storage wherein the mixed catalyst
1 According to the Appeal Brief, the real party in interest is The Dow
Chemical Company and BASF SE. See Appeal Br. 3.
2 Claims 1-3 and 8-14 are withdrawn from consideration. Non-Final Act. 2.
Appeal2018-000962
Application 14/111,919
solution and aqueous buffer solution is stored under a blanket of syngas.
Claim 4 illustrates the subject matter on appeal and is reproduced from the
Claims Appendix to the principal Brief.
4. A method of preparing a hydroformylation catalyst
solution for storage, the catalyst solution comprising:
A. a transition metal in combination with one or more
bisphosphite ligands,
B. a concentration of acidic species, and
C. water,
the method comprising the steps of (i) mixing the catalyst
solution with an aqueous buffer solution comprising one or
more materials that will neutralize and/or absorb at least 50
percent of the acidic species and (ii) storing the mixed catalyst
solution and aqueous buffer solution under a blanket of syngas.
Claims Appendix, App. Br. 32.
Appellants (see generally Appeal Br.) request review of the following
rejections:
I. Claims 4--7, 17-20 and 22 rejected under 35 U.S.C. § 103(a)
as unpatentable over Bryant '640 (US 5,874,640, iss. Apr.
21, 1998), and Maher (US 5,288,918, iss. Feb. 22, 1994).
II. Claims 4--7, 17-20 and 22 rejected as unpatentable on the
ground of non-statutory obviousness-type double patenting
over claims 1-8 of Bryant '640.
III. Claims 4--7, 17-20 and 22 rejected as unpatentable on the
ground of non-statutory obviousness-type double patenting
over claims 1-18 of Bryant (US 5,741,942, iss. Apr. 21,
1998).
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Appeal2018-000962
Application 14/111,919
Rejection 13
OPINION
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner's
rejection of independent claim 4. We add the following:
The complete statement of Rejection I appears in the Non-Final
action. (Non-Final Act. 7-12).
The dispositive issue for Rejection I is:
Did the Examiner err in determining that Bryant '640 teaches or
suggests a method of preparing a hydroformylation catalyst solution for
storage comprising mixing the catalyst solution with an aqueous buffer
solution comprising one or more materials that will neutralize and/or absorb
at least 50 percent of the acidic species and storing the mixed catalyst
solution and aqueous buffer solution under a blanket of syngas as required
by independent claim 4 ?4
The Examiner found Bryant '640 teaches a method of preparing a
hydroformylation catalyst solution that differs from the claimed invention in
that mixing the catalyst solution with an aqueous buffer solution comprising
one or more materials that will neutralize and/or absorb at least 50 percent of
3 We limit our discussion to independent claim 4 which we select as
representative of the rejected claims.
4 A discussion of the Maher reference is unnecessary for disposition of this
appeal. The Examiner relied on Maher for teaching properties of the
bisphosphite ligand. (Non-Final Act. 7-8).
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Appeal2018-000962
Application 14/111,919
the acidic species and storing the mixed catalyst solution and aqueous buffer
solution under a blanket of syngas as required by independent claim 4. The
Examiner found Bryant '640 discloses the hydroformylation catalyst
solution comprises water to enhance the rhodium-organophosphite complex
catalytic activities and treating the hydroformylation reaction product fluid
with an aqueous buffer solution sufficient to neutralize and remove at least
some amount of the phosphorus acidic species. (Non-Final Act. 8). The
Examiner concluded it would have been obvious to optimize the process to
select the specific amount of buffer solution to neutralize acidic species to
achieve the instant claimed at least 50% of the acidic species. (Non-Final
Act. 9). The Examiner also found Bryant '640 discloses the
hydroformylation conditions in the reactor have higher syngas pressure
which causes regeneration of the active catalyst complex as a result of some
of the carbon monoxide in the reactant syngas replacing the heterocyclic
nitrogen ligand of the recycled neutral intermediate rhodium species. (Non-
Final Act. 10). The Examiner concluded "[ s ]ince the neutralized mixture
taught by Bryant et al. does not require to immediately use, therefore it reads
the claimed limitation of 'to storage ... under a blanket of syngas' as the
instant claim." (Non-Final Act. 10).
Independent claim 4 is directed to a method of preparing a
hydroformylation catalyst solution for storage comprising mixing the
catalyst solution with an aqueous buffer solution and storing the mixed
catalyst solution and aqueous buffer solution under a blanket of syngas.
Bryant '640 's only disclosure of syngas is with respect to the conditions of
an ongoing hydroformylation process-and not storage conditions. Bryant
'640' s hydroformylation process utilizes high syngas pressure
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Appeal2018-000962
Application 14/111,919
hydroformylation conditions in the reactor zone to regenerate the metal-
organophosphorus ligand complex catalyst lost during aldehyde separation
using vaporization separation. (See Bryant '640 col. 39, 11. 53---66). The
claimed invention requires the storage of mixed catalyst solution and buffer
solution under a blanket of syngas that is distinct from Bryant '640's method
utilizing syngas under ongoing hydroformylation conditions. While the
Examiner hypothesizes it would have been obvious to modify the
hydroformylation process of Bryant '640 to provide conditions suitable for
storing, the evidence of record does not support this position.
Double Patenting
Re} ections II and III
The Examiner rejected claims 4--7, 17-20 and 22 as unpatentable on
the ground of nonstatutory double patenting over claims 1-8 of Bryant '640.
The Examiner also rejected claims 4--7, 17-20 and 22 as unpatentable on the
ground ofnonstatutory double patenting over claims 1-18 of Bryant '942.
In both rejections the Examiner relied on the disclosure from the respective
patents as the basis to support the nonstatutory double patenting rejections.
(Non-Final Act. 4---6).
We cannot sustain the double patenting rejections. The test of double
patenting is whether differences between inventions claimed in the instant
application and in the copending reference application are such that subject
matter sought to be patented would have been obvious to one of ordinary
skill in the art, in view of any prior art additionally relied on In re Wetterau,
356 F.2d 556, 668, (CCP A 1966). The Examiner has failed to articulate the
necessary reasoning to support the nonstatutory double patenting rejections.
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Appeal2018-000962
Application 14/111,919
Specifically, the Examiner has failed to explain where the claimed subject
matter of Bryant '942 and Bryant '640 describes or would have suggested a
method of preparing a hydroformylation catalyst solution and storing the
mixed catalyst solution and aqueous buffer solution under a blanket of
syngas as required by the claims in the present application.
CONCLUSION
For the reasons stated above we do not sustain appealed Rejections I-
III of claims 4--7, 17-20 and 22.
REVERSED
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