Ex Parte Bouwman et al

Patent Trial and Appeal Board

Feb 28, 2014

12061406 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/061,406 04/02/2008 Jeroen Patrick Michel Bouwman TS1967 (US) 8420
23632 7590 02/28/2014
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
02/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEROEN PATRICK MICHEL BOUWMAN,
PAULUS JACOBUS FENNIS, and
RONNY DE RIDDLER
____________

Appeal 2012-007992
Application 12/061,406
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-6. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A process for the batch or semi-batch preparation of a polymer
polyol, which process comprises mixing a base polyol, one or more
ethylenically unsaturated monomers, a polymerization initiator, optionally a
macromer, and optionally a chain transfer agent, and polymerizing the
mixture thus obtained at a temperature of 50 to 200 °C, wherein one or more
of the compounds to be mixed are fed while having a temperature that is
higher than ambient temperature.

Appeal 2012-007992
Application 12/061,406

2
The Examiner relies upon the following references as evidence of
obviousness:
Peerman et al. (Peerman) U.S. 4,543,369 Sep. 24, 1985
Matsumoto et al. (Matsumoto) U.S. 6,117,937 Sep. 12, 2000
Eleveld et al. (Eleveld)(WO '144) WO 99/40144 Aug. 12, 1999

Appellants' claimed invention is directed to a batch or semi-batch
process for preparing a polymer polyol. The process comprises mixing a
base polyol, unsaturated monomers, a polymerization initiator, and,
optionally, a macromer and a chain transfer agent. One or more of the
compounds fed to the mixture have a temperature that is higher than ambient
temperature.
Appealed claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsumoto in view of Peerman. Claims 5 and 6 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the stated
combination of references further in view of WO '144.
Appellants do not separately argue any particular claim on appeal.
Nor do Appellants present a separate, substantive argument against the
§ 103 rejection of claims 5 and 6. Accordingly, all the appealed claims
stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for the reasons set
Appeal 2012-007992
Application 12/061,406

3
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
There is no dispute that Matsumoto discloses a process of preparing a
polymer polyol by mixing the claimed ingredients at a temperature within
the claimed range. As acknowledged by the Examiner, Matsumoto does not
expressly teach feeding any one of the reactants to the mixture at a
temperature higher than ambient. However, we fully concur with the
Examiner that it would have been obvious for one of ordinary skill in the art
to heat one of the reactants during the feed stage since the reactant is
eventually heated in the mixture.
It has generally been held that it is a matter of obviousness for one of
ordinary skill in the art to select any order of performing process steps so
long as one of ordinary skill in the art would have had a reasonable
expectation of forming the same or similar product regardless of such
change in the sequence, in the absence of new or unexpected results. In re
Burhans, 154 F.2d 690, 692 (CCPA 1946). See also In re Gibson, 39 F.2d
975, 976 (CCPA 1930). In the present case, Appellants are simply changing
the order of the heating step for one of the reactants, i.e., heating during the
feeding step rather than heating after the feeding step and during mixing.
From reading the disclosure of Matsumoto, one of ordinary skill in the art
would have reasonably expected that the reactants involved would have
polymerized at a polymerization or reaction temperature regardless of the
preheating sequence involved so long as all of the reactants are eventually
subjected to the polymerization or reaction temperature. On this record,
Appellants have proffered no objective evidence which demonstrates
Appeal 2012-007992
Application 12/061,406

4
unexpected results attached to feeding one of the reactants at a temperature
that is higher than ambient temperature. In the absence of such evidence, the
prima facie case of obviousness established by the Examiner stands
unrebutted.
We also agree with the Examiner that Peerman further evidences the
obviousness of heating reactants in a reaction system which involves polyols
for the purpose of enhancing mixing (col. 10, ll. 63-68).

In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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