Ex Parte Reese et al

Patent Trial and Appeal Board

Oct 30, 2017

14688317 (P.T.A.B. Oct. 30, 2017)

United States Patent and Trademark Office
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.
14/688,317 04/16/2015 Jack R. Reese BMS132010- Cont. 4351
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK R. REESE,
EDWARD P. BROWNE, STEVEN J. RODBERG,
JOSE F. PAZOS, and BRIAN L. NEAL
Appeal 2017-003525
Application 14/688,317
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal the final rejections of claims 1, 3—7, and 9-14
under 35 U.S.C. § 134(a). We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Covestro LLC.”
Br. 1).
(Appeal
Appeal 2017-003525
Application 14/688,317
Appellants’ invention relates to a base-catalyzed process for preparing
long chain, active polyether polyols (Spec. 1:3—5).
Claim 1 is illustrative (emphasis added):
1. A long chain polyether polyol characterized by a
functionality of 2 to 6 and an equivalent weight of 1000 to 2200
Da, and which comprises the alkoxylation product of
(1) a starter composition having an equivalent weight of 350
Da or less, and which comprises the alkoxylation product
of
(a) a low molecular weight polyether having a
functionality of 3 and an equivalent weight of less
than 350 Da,
(b) at least one low molecular weight starter
compound comprising glycerin,
and
(c) propylene oxide or a mixture of propylene oxide
and ethylene oxide, with the weight ratio of propylene
oxide to ethylene oxide ranging from 80:20 to 100:0,
in the presence of
(d) at least one double metal cyanide catalyst;
with
(2) one or more alkylene oxides, wherein up to 20% of
ethylene oxide is added as a cap,
in the presence of
(3) at least one basic catalyst.
Appeal Br. 9 (Claims App.).
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Application 14/688,317
Appellants appeal the following rejection:
I. Claims 1, 3—7, and 9-14 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kaushiva2 in view of Emge3 (Ans. 3—4).
Appellants’ arguments focus on the subject matter of independent
claims 1 and 7 of rejection (I) (Appeal Br. 4—8; Reply Br. 1—7). We select
claim 1 as representative. Any claims not argued separately with regard to
rejection (I) will stand or fall with our analysis regarding the present
independent claim 1 (Appeal Br. 2).
We note that Appellants do not substantively address the following
obviousness-type double patenting rejection:
II. Claims 1, 3—7, and 9-14 are rejected on the grounds of
nonstatutory obviousness double patenting as unpatentable over
Reese4 (Ans. 2—3).
Appellants state that they will submit a terminal disclaimer to
overcome the obviousness-type double patenting rejection as needed once a
claim is allowed (Appeal Br. 2, 7; Reply Br. 1). Therefore, on this record,
we summarily affirm the Examiner’s obviousness-type double patenting
rejection (II).
FINDINGS OF FACT & ANAFYSIS
REJECTION (I):
Appellants argue that Kaushiva’s EO-capped polyols would not have
rendered the subject matter of claim 1 obvious because Kaushiva’s EO-
2 US 2005/0096488 A1 to Kaushiva, published May 5, 2005.
3 US 2012/0022179 A1 to Emge et al., published Jan. 26, 2012.
4 US 9,051,412 B2 to Reese et al., issued June 9, 2015.
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Appeal 2017-003525
Application 14/688,317
capped polyols are formed by reacting a starter with a heel, which contains
an unrefined polyol with residual KOH, an acid, a double metal cyanide
(DMC) catalyst, and alkylene oxides, to form the polyol in a DMC-catalyzed
process (Appeal Br. 4; Reply Br. 2). Appellants thus conclude that
Kaushiva’s starter “does not correspond to the starter composition required
by the present claims” (Reply Br. 2). Furthermore, Appellants contend that
Kaushiva “does not disclose or suggest adding glycerin and other low
molecular weight starter compounds to prepare the KOH polyols described
therein” including the use of a DMC catalyst (Appeal Br. 4; Reply Br. 2).
Appellants’ arguments are not persuasive because the claim does not
preclude the EO-capped polyols being formed in the presence of the heel or
an acid. Claim 1 uses the open-ended transitional claim language
“comprises.” Likewise, Appellants’ assertions that Kaushiva is silent with
regard to glycerin, other low molecular weight starter compounds, and the
DMC catalyst are similarly unpersuasive. As the Examiner found,
“Kaushiva discloses mixtures of starter compounds which include glycerol
and the preferred polyether triol of [EJxample 1” (Ans. 5; see also id. at 3).
Moreover, we note that Kaushiva’s “zinc hexacyanocobaltate catalyst (0.45
g)” used in Example 1 is a double metal cyanide catalyst (Kaushiva 148).5
Therefore, Appellants’ arguments fail to identify reversible error in the
Examiner’s finding that Kaushiva teaches all of the limitations recited in
claim 1.
5 The trade name for this compound is a “Double Metal Cyanide Catalyst.”
See zinc hexacyancobaltate(III), tertiary butyl alcohol/propylene glycol
complex —Substance Information — ECHA, European Chemicals Agency,
https: //echa. europa. eu/ substance-information/-/substanceinfo/100.102.370.
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Appeal 2017-003525
Application 14/688,317
Appellants argue that it would not have been obvious to add Emge’s
oligomeric glycerol, which includes residual basic catalyst, because basic
catalysts poison DMC catalysts (Appeal Br. 5—6; Reply Br. 5).6 Appellants
further argue that Emge’s poly ether polyols are all prepared by basic or
alkaline catalysts, which would not “motivate one skilled in the art to make
the substitution proposed by the Examiner” (Reply Br. 3).
Contrary to Appellants’ arguments, the Examiner is not proposing to
bodily incorporate all of Emge’s features into Kaushiva’s starter
composition. Rather, the Examiner relies on Emge’s exemplification of
glycerol use in starter compositions to demonstrate that such use for
polyether polyol preparation was known at the time of the invention (Ans.
4). As set forth above, Kaushiva teaches all of the limitations recited in
claim 1.
Appellants argue that Kaushiva’s Example 1 provides that
“oxyethylene was 72% of the total alkylene oxide content,” which exceeds
the requisite 20% of ethylene oxide added as a cap (Appeal Br. 7).
Appellants further argue that the Examiner’s calculations demonstrating that
Kaushiva’s ethylene oxide is added as a cap in amounts that range from 5 to
45% by weight are erroneous because they account for the total amount of
alkylene oxides added throughout the entire process (Reply Br. 6—7; see also
Appeal Br. 7). Appellants contend that “the skilled artisan would readily
know and understand that the EO cap in the present invention relates to the
amount of EO that is added relative to the total amount of alkylene oxides
6 Appellants argue for the first time in the Reply Brief that Emge teaches
oligomeric glycerol, which is not the requisite glycerol recited in claim 1
(Reply Br. 5). As this argument was not raised earlier, it is untimely and
waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010).
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Application 14/688,317
added after the KOH was added to the reactor or during the KOH phase or
step of the reaction” (Reply Br. 6).
Appellants’ arguments are not persuasive because attorney argument
cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600,
602 (CCPA 1965).
Even assuming Appellants’ arguments regarding the Examiner’s
calculations are correct, “[i]t is well settled that a prior art reference is
relevant for all that it teaches to those of ordinary skill in the art.” In re
Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Kaushiva expressly discloses
that “[t]he total EO content of the EO-capped polyols ... is from 5 to 45
wt. %, based on the total weight of the EO-capped polyol” (Kaushiva 141).
This range overlaps with the range recited in claim 1 and, thereby, would
have rendered the claimed subject matter obvious. In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). As the Examiner found, Appellants “have
failed to show an unexpected result of maintaining the ethylene oxide cap to
values under 20% by weight” (Ans. 7).
Thus, based on this record, we sustain this rejection.
CONCLUSION
Accordingly, on this record and for the above reasons, we sustain: (I)
the 35 U.S.C. § 103(a) rejection of claims 1, 3—7, and 9-14 over Kaushiva in
view of Emge and (II) the obviousness-type double patenting rejection of
claims 1, 3—7, and 9-14 over Reese.
DECISION
The Examiner’s § 103(a) and nonstatutory obviousness double
patenting rejections are affirmed.
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Application 14/688,317
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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