APPLICATION OF ARMSTRONG

• Citation: 126 USPQ 281,280 F.2d 132
• Decision Date: 20 July 1960
• Docket Number: Patent Appeal No. 6523.
• Parties: Application of Godfrey Paul ARMSTRONG et al.
• Court: United States Court of Customs and Patent Appeals

126 USPQ 281, 280 F.2d 132 (1960)

Application of Godfrey Paul ARMSTRONG et al.

Patent Appeal No. 6523.

United States Court of Customs and Patent Appeals.

June 14, 1960.

As Modified July 20, 1960.

Kenyon & Kenyon, New York City, Hercules Powder Co., Lawrence, Kan., Clinton F. Miller, Wilmington, Del., Solon B. Kemon, Kemon & Palmer, Washington, D. C. (Richard K. Parsell, New York City, of counsel), for appellants.

Clarence W. Moore, Washington, D. C. (Raymond E. Martin, Washington, D. C., of counsel) for Comr. of Patents.

Before WORLEY, Chief Judge, RICH, MARTIN and SMITH, Judges, and FRANCIS L. VAN DUSEN, Judge.¹

MARTIN, Judge.

This appeal is from a decision of the Board of Appeals dated October 28, 1957 and two decisions of that board dated September 30, 1958, affirming the final rejection of all of the claims remaining in application Serial No. 320,336, filed November 13, 1952, entitled "Manufacture of Peroxidic Compounds." That application is stated to be a division of application Serial No. 15,954, filed March 19, 1948, now U. S. Patent 2,632,772, issued March 24, 1953.

The specifications of those applications as filed for purposes of this appeal, are identical. The invention claimed in this case is directed to an anhydrous process of producing cumene hydroperoxide from cumene (isopropyl benzene). The anhydrous or homogeneous liquid phase process for producing cumene hydroperoxide is broadly distinguished from the aqueous or alkali aqueous phase oxidation by the absence of substantial quantities of water in admixture with the cumene. In both processes molecular oxygen as pure oxygen or air is maintained in contact with the liquid reaction mixture, and under proper operating conditions it reacts with the cumene to form the desired hydroperoxide. Present in the reaction mixture is an alkaline substance which functions to take up or react with undesirable carboxylic acid by-products. The specific alkaline substances claimed in this case are the alkali metal carbonates and more particularly sodium carbonate. The most advantageous temperature range is stated to be 70° C. to 150° C.

Of the claims on appeal, claim 3 is representative of claims 1 to 5, and claim 8 is representative of claims 7 and 8. They are:

"3. In a process for oxidizing cumene to cumene hydroperoxide in liquid phase with elemental oxygen as oxidizing agent, the improvement which comprises providing and maintaining solid sodium carbonate in contact with said cumene and employing temperatures in the range from above 90° C. to about 130° C.

"8. In a process for oxidizing cumene to cumene hydroperoxide in liquid phase with elemental oxygen as oxidizing agent, the improvement which comprises effecting said oxidation in homogenous sic liquid phase in the presence of alkali metal carbonate provided in the reaction mixture and employing temperatures in the range from about 70° C. to about 150° C."

Two rejections stand against claims 1 to 5 and a single rejection stands against claims 7 and 8. One rejection is based upon the alleged failure of the specification to support certain of the claimed limitations; the other is in the nature of a double patenting rejection. We shall consider them in the order in which we have named them.

Claim 3 had its genesis as claim 1 of U. S. Patent 2,681,936¹ issued to one Joris. Claims 1, 2, 4 and 5 are patterned after that claim. Should claim 3 ultimately be found allowable to the present applicants, applicants' avowed intent is to provoke an interference with that patent.

The board affirmed the rejection of claims 1 to 5 as being unsupported by the specifications of both the parent² and the instant applications as well as being fully met by Belgian patent No. 496,995.³ If those specifications do support the appealed claims, then the effective filing date of the present application (March 19, 1948) is clearly prior to the effective date of the Belgian patent and it is overcome as a reference against the claims on appeal.

The specific point of disagreement between the Patent Office and the appellants revolves around the phrases "providing and maintaining solid alkali metal carbonate in contact with said cumene" (claim 1) and "providing and maintaining solid sodium carbonate in contact with said cumene" (claims 2 to 5). It is the position of the Patent Office that neither the parent nor the instant specifications expressly or inherently supports the quoted limitations. With this conclusion appellants disagree. Sufficiency of support for the other limitations is not questioned by the Patent Office.

Since the specifications of the parent and the appealed applications (as filed) are identical for purposes of the issue under consideration, the discussion relating to the parent application will apply equally to the disclosure of the appealed application. If the parent application would have supported the claims here on appeal, so also then will the appealed application.

As to the homogeneous phase process for producing cumene hydroperoxide from cumene, the specification with respect to the alkaline substance which is to be present, states:

"When the process of the invention is carried out in the homogeneous liquid phase i. e. a liquid phase in which no immiscible diluent is present, the alkaline substances which are to neutralize the carboxylic acids present or formed during the reaction may be added in the form of a concentrated aqueous solution of water-soluble alkaline compounds such as alkali metal hydroxides.

"* * * The alkaline substances are preferably added in the form of concentrated solutions, for instance of alkali metal hydroxides in order to facilitate their introduction and their uniform distribution. The amount of water in the solution is advantageously limited so that at the reaction temperature it is evaporated with great rapidity. At any rate, it should be so limited that substantially no heterogeneous liquid phase is formed in the reaction mixture." Emphasis ours.

The disclosed alkaline substances which the application states may be used interchangeably in the oxidation process are alkali hydroxides and carbonates, including sodium carbonate, as well as alkaline earth oxides and hydroxides.

Example 4 of the parent specification is as follows:

"A reaction vessel equipped with a high speed agitator was charged with 150 cc. of purified isopropyl benzene to which 0.1 cc. of a 20% aqueous solution of sodium hydroxide had been added. The contents of the vessel were heated to 130° C. and oxygen of about 98% purity was introduced into the reactor. Absorption started within 15 minutes and the rate of absorption was 5.8 mol percent in the first hour of which 100% was converted into peroxide. In the second hour the oxygen absorption was 17.4 mol percent and the efficiency was 97%. The absorption of oxygen by the reaction mixture in the third hour was 20.6 mol percent, whilst the efficiency dropped to 93%. The oxygen introduction was then stopped before the absorption rate reached its previously ascertained maximum."

An affidavit by one Baird, submitted to show that solid alkali metal carbonate was present during the homogeneous phase oxidation described in the specification, was based upon the process of Example 4. Instead of using sodium hydroxide, sodium carbonate was substituted therefor. We agree with the board's understanding that if there is "appropriate language in the specification whereby one or more of the examples could be converted" to a carbonate process, it is unnecessary to have a specific example drawn to such a process to show the limitation in issue is inherently supported by the specification. In view of the equivalency which appellants teach for the various alkaline substances in their specification, and in view of the function which those substances play in the process, we feel that the conversion of Example 4 to a carbonate process from a hydroxide process is clearly within the scope of the parent disclosure.

There were several departures in the affidavit test from the steps of Example 4. Those were specifically pointed out by the Board of Appeals accompanied by the observation that there was no explanation for those changes in procedure. The test procedure included using quantities of cumene four times as great as that used in Example 4 as well as four times the equivalent amount of sodium carbonate instead of sodium hydroxide. No significance was attributed by the board to those changes.

The affidavit (in part) reads as follows:

"Apparatus:

"One liter indented Pyrex flask fitted with a high speed stirrer, reflux condenser, sparge tube, and thermometer. Heat was supplied with a Glas-Col mantle.

"Charge:

"Cumene (99.5%) 600 cc. "20% Aqueous Na2CO3 0.53 cc.

"The cumene was charged to the flask, heat and agitation applied, and 99.5% oxygen introduced at 300 cc./min. At 81° C. the 0.53 cc. of 20% NA2CO3 was added. After 10 minutes of heat-up the temperature reached 120° C. This point was taken as zero run time.

                  "Run Time                                           % Cumene
                   (hours)         Temp. °C.   O2 Input cc./min.  Hydroperoxide
                     0               120             310                --
                     0.25            129             350                0.20
                     1.0             131             500                5.22
                     2.0             132             510                25.6
                     3.0             129             510                44.2
                

"Samples were withdrawn at the end of each of the periods indicated above, analyzed for cumene hydroperoxide content by the iodine liberation method, and examined visually to determine whether there was a solid phase present. Each of the samples and the final product were found to contain a small amount of white solid crystalline material as a separate solid phase.

"The samples taken at the end of 0.25 and 2.0 hours and from the final product, identified as X-8098-47-1, X-8098-47-3, and X-8098-47, respectively, were given to William E. Fox of

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