Claims 25 and 26 have been rejected as being unpatentable over Watson et al. in view of Altshuler et al.

The patent to Watson et al. is for a process for the liquid phase catalytic alkylation of isoparaffins in which the isoparaffins, mixed with sulfuric acid as the catalyst, is passed through a series of reaction zones, olefin hydrocarbon being supplied to each zone from the common manifold in parallel arrangement, as illustrated in Figure 1 of the patent. At the point of olefin introduction in each zone agitators are provided for thorough mixing of the reactants and jacketed refrigerating heat exchangers for immediate cooling of the reaction mixture. The introduction of the olefin at a large number of points through the reactor, the intensive mixing and refrigeration and the feeding of the olefin into the reaction mixture is carried out at such a rate as to avoid the hydropolymerization of the olefin and of undesired oxidation reactions caused by sulfuric acid. In column 5, lines 2-6, the patentees state that,

it is important that localized temperature rises adjacent the immediate points of reaction be minimized, and this is effectively accomplished by refrigeration intermediate the large number of spaced points of olefin addition.

The isoparaffins supplied as feed may also be recycled hydrocarbon, "separated from previously formed alkylate and returned to the system" (column 6, lines 36-38).

The patent to Altshuler et al., in describing the alkylation of the isoparaffins with olefins using sulfuric acid as the catalyst, states that the ratio of isoparaffinic reactant to olefin should be maintained in the vicinity of 100 to 1 and the temperature between 45° to 60° F. in order to avoid losses by polymerization. Such losses are stated to be further reduced by increasing the proportion of isoparaffin to olefin and lowering the temperature. In order to carry out these principles of operation, Altshuler et al. pass a mixture of the isoparaffin and olefin through a chiller coil and then to a contactor in which thorough mixing with acid catalyst is attained by circulating the mixture by means of an impeller through inner and outer spaces formed by the shells of the contactor 7, as shown in Figure 1 of the patent drawing. It is the Examiner's position that Watson et al. disclose the supply of olefin in parallel streams to a plurality of reactors, the acid and isoparaffin being supplied to the first reactor for series flow through the successive reaction zones at rates to promote the alkylation reaction and past the area of supply of olefin while removing the exothermic heat of the reaction (by means of the heat exchangers). The Examiner further refers to column 6, lines 36-38 of Watson et al. which state that the isoparaffin may be recirculated, and combines this teaching with Altshuler et al. who disclose the recirculation of the reaction mixture through a contactor while cooling and with an increase in

the ratio of isoparaffin to olefin as claimed. The Examiner notes that this multiplication of the ratio as disclosed in Altshuler et al. is approximately 13 and that the claimed increase of 15 times as recited in claim 26 does not distinguish thereover except in degree. It is the Examiner's holding, therefore, that no invention would be involved in carrying out the process of Watson et al. and applying the principles of recirculation and an isoparaffin to olefin ratio as taught in Altshuler et al.

Appellants' principal points of contention with respect to the Watson et al. patent are based on the grounds that in the patented procedure the reaction zones are horizontally disposed and there is no flow upwardly from the bottom to the top of the reactor; that the heat is not removed in the mixing zones of Watson et al. but in the heat exchangers which are removed from the mixing zone and that, therefore, the heat is not removed substantially as liberated to maintain substantially "isothermal" conditions throughout each of the reaction zones as called for in the claims. Appellants similarly contend that the Altshuler et al. patent does not disclose maintenance of "isothermal" conditions in the reactor and that the recirculation in Altshuler et al. is not sufficiently rapid to attain the recirculation and 400 to 1 ratio of isoparaffin to olefin as disclosed herein.

As pointed out by the Examiner, the specific ratio of 400 to 1 of isoparaffin to olefin is not recited in the claims and, furthermore, Watson et al. state that the reaction mixture is subjected to "very efficient refrigeration immediately following each point of olefin addition" and immediate removal of heat of the reaction. While appellants' process relies upon autorefrigeration by vaporization of light hydrocarbons at each stage of the reaction, it is not evident that such refrigeration would necessarily produce such conditions of cooling which would be essentially different from those disclosed in Watson et al. There is no reason to assume that the temperature at the bottom of the reactors of the present process would not vary as much from the top at the point of vaporization and cooling as the variations in temperature which might occur in Watson et al. Furthermore, no point of patentable novelty is evident by reason of the flow of reactants from the bottom to the top of the reactors as distinguished from horizontal flow as disclosed in Watson et al. The principles of operation as stated in the Altshuler et al. patent and the degree of recirculation as disclosed are regarded as sufficiently suggesting an increased ratio of isoparaffin to olefin as claimed. It is our conclusion, therefore, that the rejection of claims 25 and 26 as lacking invention over Watson et al. in view of Altshuler et al. is without error and we will sustain the same.

Claims 17 and 18 have been rejected as lacking invention over Watson et al. in view of Altshuler et al. and Kemp. These claims,

which are dependent from claim 25, recite in addition the separation of the hydrocarbon from the acid catalyst there, the fractionation of the hydrocarbon and the recirculation of a portion of the acid catalyst with the isoparaffin hydrocarbon for recycling.

The Examiner refers to the patent to Watson et al. which discloses the separation of the hydrocarbons from the acid by means of a centrifuge, the subsequent fractionation of the hydrocarbon layer and the return and mixing of the acid with the isoparaffin. It is the Examiner's position that no invention would be involved in the addition of fresh catalyst directly to the first stage rather than to a prior mixing of the isoparaffin, and further refers to Kemp which discloses the introduction of the catalyst directly to a first stage (through line 16 of the drawing). We find no error in this rejection as stated by the Examiner since the added steps which are set forth in claims 17 and 18 add nothing of patentable merit over the Watson et al. and Altshuler et al. patents which teach the basic process claimed. The centrifuge 106 of Watson et al. is considered to be the full equivalent of the settling zone disclosed in the present process, a gravity settling zone being, furthermore, sufficiently disclosed in the Altshuler et al. separator 29 and we are in complete agreement with the Examiner that there would be no invention in the introduction of fresh acid directly to the first zone, if desired, particularly in view of Kemp who discloses this expedient to be old. The rejection of claims 17 and 18 on the cited art will accordingly likewise be sustained.

[1] Claims 17, 18, 25 and 26 have been further rejected as being directed to new matter by reason of the introduction of the clause "removing the exothermic heat of reaction substantially as liberated to maintain substantially isothermal conditions throughout each of said reaction zones."

It is the Examiner's view that while the original disclosure supports the step of "removing the exothermic heat of reaction substantially as liberated" that no basis is found in the specification or in the claims. as originally presented to support the limitation that the reaction is maintained under substantially "isothermal" conditions throughout each of said reaction zones as now recited.

Appellants contend that the contended term is a condition which is inherent in the operation of the process and that the choice of the word "isothermal" to describe such inherent operation is proper and does not involve new matter. In support of the contention appellants have cited various portions of the specification which refer to the maintenance of temperature by auto-refrigeration and pressures promoting continuous vaporization of hydrocarbons for temperature control. However, we find no statement or implication in the original specification or claims that the refrigeration results in an isothermal condition throughout the reaction zone and we cannot agree with

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appellants that such an isothermal condition must necessarily and inherently result by reason of the operation as disclosed. As stated above in connection with the rejection of the claims upon the cited art, there is no basis found for assuming that the conditions of cooling at the point of vaporization of the hydrocarbons would necessarily produce identical conditions throughout the reaction zone. The rejection of claims 17, 18, 25 and 26 as being directed to new matter will accordingly be sustained.

[2] The decision of the Examiner is affirmed. Affirmed.

EX PARTE WHITE ET AL.

Appeal No. 53-45, Patent No. 2,868,744 of January 13, 1959.

Decided March 31, 1958.

759 O.G. 783

1. CLAIMS INDEFINITENESS-DOUBLE INCLUSION OF AN ELEMENT-MARKUSH TYPE CLAIMS-35 U.S.C. 112.

"The double inclusion of an element in a claim has long been held to be objectionable since it makes the claims vague and indefinite and fails to point out and distinctly claim the invention as required by 35 U.S.C. Section 112. *** This principle is considered applicable in the case of claims of the Markush type,

*

2. SAME CONSTRUCTION OF CLAIMS APPLICATION CLAIMS GIVEN BROADEST INTERPRETATION.

"It is well settled that in the initial consideration of patentability the the terms of claims must be given the broadest interpretation which, within reason, may be applied."

3. SAME

INDEFINITENESS-DOUBLE INCLUSION OF ELEMENT-MARKUSH TYPE

CLAIMS.

In regard to product claims exemplified by a claim reading, "A product comprising an intimate mixture of an in situ hydrolyzed cellulose ester and a substantially unhydrolyzed hydrophobic fiber and film forming polymer selected from the group consisting of acrylonitrile polymers, vinyl chloride polymers and copolymers of acrylonitrile and vinyl chloride," Held that the terms "acrylonitrile polymers" and "vinyle chloride polymers," as recited, include the copolymers of acrylonitrile and vinyl chloride; and Held that this inclusion renders the claims indefinite for failure to distinctly set forth the members of the Markush group, in that the member of the group which is directed to the copolymers, as recited, would be included by the generic expressions applied to the remaining members and would be, in essence, a repetition of part of the scope covered by such broader terms.

4. CLAIMS BROADER THAN DISCLOSURE.

Upon review of a rejection of certain claims as being too broad in the terms "acrylonitrile polymers" and "vinyl chloride polymers" on the ground that only one copolymer of each material had been disclosed and that the limited disclosure in the application to three suitable polymers was insufficient to

support such broad terms, Held that "It is clear from the disclosure that the principle of the process involved is of a physical rather than a chemical nature and that the specific nature of the polymers employed in the blend is not the significant aspect of the invention"; that "The principle of action here being clear, no reason is seen for restricting the claims to the specific polymers disclosed in the application"; that "There is no basis found for assuming that polymers coming within the scope recited would be inoperative nor have examples of such inoperative compositions been cited by the examiner"; and that "It is accordingly our view that appellant is entitled to the broad scope of the claims as defined * * *.”

APPEAL from the Examiner. Serial No. 347,388.

Modified.

Albert Sperry for White et al.

Before FEDERICO and SURLE, Examiners-in-Chief, and WILES, Acting Examinerin-Chief

SURLE, Examiner-in-Chief.

This is an appeal from the action of the Examiner finally rejecting claims 42-46, 48-50, and 52 and 53. Claims 47 and 51 have been allowed. Claims 44, 45, 48, 49, 52 and 53 have been withdrawn from consideration as not readable on the elected species. This leaves for our consideration claims 42, 43, 46 and 50.

Claim 42 is representative and is reproduced here:

42. A product comprising an intimate mixture of an in situ hydrolyzed cellulose ester and a substantially unhydrolyzed hydrophobic fiber and film forming polymer selected from the group consisting of acrylonitrile polymers, vinyl chloride polymers and copolymers of acrylonitrile and vinyl chloride.

No references have been relied upon by the Examiner.

We will refer to the "Journal of Polymer Science" volume 8, Jan.-June, 1952, No. 3, pages 258-259.

The appealed claims are directed to the preparation of blends of hydrophobic polymers with cellulose in order to produce fibers or films capable of being dyed with cellulose dyes. The process for carrying out the invention is considered sufficiently described in the above quoted claim.

Claims 42, 46 and 50 have been rejected as involving the Markush groups of overlapping scope. It is the Examiner's position that the terms "acrylonitrile polymers" and "vinyl chloride polymers" are of such scope as would include the copolymers of acrylonitrile and vinyl chloride. If so construed, these claims would be considered as being indefinite in failing to distinctly set forth the members of the Markush group, since the member of the group which is directed to the copolymers, as recited, would be included by the generic expressions applied to the remaining members and would be in essence, a repetition of part of the scope covered by such broader terms. [1] The double inclusion of an element in a claim has long