Ex Parte Wardius et al

Patent Trials and Appeals Board

Mar 25, 2019

13190648 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/190,648 07/26/2011
157 7590 03/27/2019
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Don S. Wardius
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BMSl 12018/MD08-36 2570
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
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 DONS. WARDIUS and STEVEN L. SCHILLING
Appeal2018-006080 1
Application 13/190,648
Technology Center 1700
Before JEFFREY R. SNAY, BRIAND. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 6-11, and 23-33. We have jurisdiction. 35
U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, Covestro LLC, is the real party in interest.
Appeal Br. 2.
Appeal2018-006080
Application 13/190,648
STATEMENT OF THE CASE2
Appellants describe the invention as relating "to amine-initiated
polyether polyols produced in part from renewable resources." Spec. 1 :6-9.
Claim 1, reproduced below with emphasis added to certain key recitations, is
the sole independent claim on appeal and is illustrative of the claimed
subject matter:
1. A process for the production of an amine-based polyol
comprising reacting:
a) an active-hydrogen containing starter consisting
of an amine adduct comprising the reaction product of
(i) an amine and
(ii) an alkylene oxide
in amounts such that from 1 to 2 moles of alkylene oxide are
present for each amine group,
and
b) a triglyceride,
in the presence of
c) an alkylene oxide,
and
d) a catalyst
to form an amine-based polyol characterized by a
functionality of from about 1. 5 to about 3. 5, an equivalent
weight of from about 100 to about 600, and an overall
renewable content of from 20 to 85% by weight.
Appeal Br. 11 (Claims App.).
2 In this Decision, we refer to the Final Office Action mailed December 20,
2017 ("Final Act."), the Appeal Brief filed February 12, 2018 ("Appeal
Br."), the Examiner's Answer mailed May 18, 2018 ("Ans."), and the Reply
Brief filed May 25, 2018 ("Reply Br.").
2
Appeal2018-006080
Application 13/190,648
REJECTION
On appeal, the Examiner maintains the rejection of claims 1, 6-11,
and 23-33 3 under 35 U.S.C. § 103 as unpatentable over Lorenz et al. (US
9,284,401 B21; iss. Mar. 15, 2016 ("Lorenz")) in view of Dietrich et al. (US
5,886,062; iss. Mar. 23, 1999 ("Dietrich")). Ans. 3.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections.")). After considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellants do not separately argue any dependent claim. We
therefore limit our discussion to claim 1. All remaining claims stand or fall
with that claim. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
The Examiner rejects claim 1 as under 35 U.S.C. § 103 as obvious
over Lorenz in view of Dietrich. Ans. 3. Because Appellants do not dispute
most of the Examiner's findings, we focus on the issues Appellants raise.
3 The Examiner's Final Office Action and Answer both indicate that claim 2
is rejected. Ans. 3; Final Act. 2. This appears to be a typographical error;
claim 2 is no longer pending. Appeal Br. 5.
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Appeal2018-006080
Application 13/190,648
Appellants argue that, as a matter of claim construction, claim 1
excludes the use of any active-hydrogen containing starters other than the
recited amine adduct. Appeal Br. 7, 9. The Examiner states that the
Appellants' claim construction position is "convincing." Ans. 7. Because,
for the reasons explained below, Appellants' argument does not identify
reversible error even under Appellants' proposed claim construction, we do
not need to address the correctness of this construction here.
Appellants argue that Lorenz does not teach or suggest using claim
1 's recited amine adduct as its "only" starter in its process. Appeal Br. 7.
With respect to use of the amine adduct, the Examiner finds that Dietrich
teaches the recited amine adduct and determines that it would have been
obvious to make use of Dietrich's adduct as the starter in the Lorenz process.
Ans. 4--5. Appellants do not dispute the Examiner's findings regarding
Dietrich, or the Examiner's stated reason why a person of skill in the art
would have combined the teachings of these two references. Indeed, these
issues were already decided in the prior appeal deriving from the instant
patent application: Ex parte Wardius, Appeal 2016-004843 (PTAB May 15,
201 7). The reasoning from that prior decision is incorporated herein by
reference.
With respect to the amine adduct being the "only" starter in the
process, Appellants emphasize the following passage from Lorenz:
Prefabricated alkylene oxide addition products of the starter
compounds mentioned, that is to say polyether polyol having OH
numbers of from 6 to 800 mg KOH/g, can furthermore also be added
to the process.
4
Appeal2018-006080
Application 13/190,648
See Appeal Br. 7 ( quoting Lorenz 4:26-29). 4 Based on this passage,
Appellants argue that a person of ordinary skill in the art would have
understood that "prefabricated alkylene oxide addition products of active-
hydrogen containing starters can be used in conjunction with other active-
hydrogen containing starters." Id. Appellants further argue that a person of
skill in the art would not have had an expectation of success in using the
reaction product of Dietrich in the Lorenz process without also using the
starters taught at Lorenz 4:26-29. See Reply Br. 2-3.
The preponderance of the evidence does not support Appellants'
reading of Lorenz. Rather, Lorenz at 3:56-4:25 teaches the use of various
starter compounds including "amino-functional starter compounds" (i.e., the
genus from which Dietrich provides the more specific species of claim 1 ).
The following Lorenz paragraph at 4:26-36 teaches addition products that
"can furthermore also be added to the process." That paragraph also teaches
that "[i]t is also possible also [sic] to employ polyester polyols." Lorenz
does not indicate that any of these additional reactants of the paragraph at
4:26-36 must be added or are mandatory. See Ans. 6 (finding "it is not a
requirement that the alkylene oxide adducts be used in conjunction with the
non-alkylene oxide adduct starter compounds."). Thus, Lorenz would have
reasonably suggested to a person having ordinary skill in the art that its
various starter components could be used with or without one of the
additional components. Therefore, even if claim 1 excludes additional
4 Both Appellants and the Examiner generally provide citations to the
published patent application corresponding to Lorenz-US 2008/0114086
Al, published May 15, 2008.
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Appeal2018-006080
Application 13/190,648
starter components ( as Appellants argue), Lorenz nonetheless reasonably
would have suggested use of only the amino-functional starter component.
Because Appellants' arguments do not identify reversible error, we
sustain the Examiner's rejection.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
6-11, and 23-33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
6