Application of Maloy, Patent Appeal No. 7137.

• Decision Date: 12 March 1964
• Docket Number: Patent Appeal No. 7137.
• Citation: 51 CCPA 1081,328 F.2d 933
• Parties: Application of Arthur L. MALOY, Charles R. Maloney and James O. Hambrick.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

51 CCPA 1081, 328 F.2d 933 (1964)

Application of Arthur L. MALOY, Charles R. Maloney and James O. Hambrick.

Patent Appeal No. 7137.

United States Court of Customs and Patent Appeals.

March 12, 1964.

J. Hart Evans, New York City, Paul A. Rose, Washington, D. C., for appellants.

Clarence W. Moore, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

ALMOND, Judge.

This appeal is from the decision of the Board of Appeals refusing claims in patent application Serial No. 622,837, filed November 19, 1956, for "Production of Styrene from Phenyl Methyl Carbinol."

The invention relates to a method of producing styrene. The prior art taught the dehydration of phenyl methyl carbinol with the aid of a catalyst to form styrene. The claimed invention here appealed is "the discovery that phenyl methyl carbinol can be dehydrated to styrene with sulfuric acid as the catalyst in the vapor phase."

Claim 1 is illustrative and reads as follows:

"Process for producing styrene which comprises heating phenyl methyl carbinol in the vapor phase and in the presence of sulfuric acid at a temperature sufficiently elevated to cause dehydration of said phenyl methyl carbinol."

Three rejections were sustained by the Board of Appeals: (1) unpatentable over prior art; (2) undue breadth and functionality; and (3) undue multiplicity.

As to (1), the board relied on the following references:

                  Seymour et al.           2,634,302   April 7, 1953
                  Hunter et al. (British)    589,015   June  9, 1947
                  Monsanto (British)         633,646   Dec. 19, 1949
                

Appellants state, and the solicitor agrees, that the Seymour et al. patent is the United States counterpart of the Monsanto British patent, and the two are substantially identical. Therefore, only Seymour et al. will be discussed here.

The Seymour et al. patent discloses the dehydration of dimethyl-biphenyl-carbinol to isopropenyl biphenyl in the vapor phase in the presence of one of a number of catalysts at temperatures "above 225° C. and preferably in the neighborhood of 250° C. to 320° C." Included in the catalysts disclosed are sodium and potassium bisulfate.

The Hunter et al. patent discloses the vapor phase dehydration of phenyl methyl carbinol and substituted phenyl methyl carbinols in the presence of one of a variety of catalysts. Included in the catalysts disclosed is phosphoric acid, but not sulfuric acid. Hunter et al. notes that the dehydration process had been carried out in the liquid phase with sulfuric acid in the prior art. Substituted phenyl methyl carbinols are contemplated as shown by the following:

"According to the invention therefore phenyl methyl carbinol or a substitution derivative thereof is heated in the vapour phase under a pressure below 300 mm. of mercury in contact with a dehydration catalyst. The term "substitution derivative" is employed to denote both alkyl substitution derivatives (i. e., homologues) and derivatives containing other substituting groups or atoms, for example aryl groups and/or halogen atoms, either in the nucleus or in the side chain or in both."

The examiner rejected the claims "as unpatentable over Fenoglio et al, Hunter et al, McKeever et al, Kern, Seymour et al and the Monsanto (British) patent." The examiner considered the dimethyl biphenyl carbinol of Seymour et al. to be "a similar alcohol" to phenyl methyl carbinol. He said:

"* * * It is not deemed inventive to employ any specific compound capable of yielding sulfuric acid in the process of the references in the absence of a showing of any new and unexpected results. Furthermore, it is not inventive to conduct a reaction in the vapor phase which formerly had been carried out in the liquid phase."

On appeal, the board disagreed with the rejection "based upon McKeever et al., Kern, Fenoglio et al. or Hunter et al. alone." It drew a distinction between vapor phase dehydration and liquid phase dehydration. However, Hunter et al. was found to provide an "art recognition of the relationship between the starting carbinol of Seymour et al. or Monsanto and of appellants." That is, dimethyl biphenyl carbinol, as in Seymour et al., was considered a "substituted phenyl methyl carbinol." With this relationship in mind, the board found it obvious "to apply the vapor phase dehydration employing potassium or sodium bisulphate as the catalyst to appellants' starting material."

The board found the catalysts of Seymour et al. to correspond to the terms of the claims relating to catalysts, stating:

"Since it is clear that under the conditions of dehydration at temperatures up to 320° C taught in these references, the potassium or sodium bisulphate will, in accordance with the reaction mechanism pointed out in pages 4 and 5 of appellants\' specification, produce vaporous sulfuric acid and sulphur trioxide as well as mixtures of sodium or potassium sulphate and sodium or potassium bisulphate and of such sulphates in admixture with sulfuric acid, the dehydrating catalyst of Seymour et al. and Monsanto corresponds with that employed by appellants."

Two questions are posed by appellants with respect to the rejection on prior art. They are:

"The first question presented in this case is whether or not the Board, in affirming the Examiner, made a new rejection under rule 196(b) of

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