Ex Parte Adkins et al

Patent Trial and Appeal Board

Jul 31, 2014

12813746 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL
AND APPEAL BOARD

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Ex parte RICK L. ADKINS, JIONG ENGLAND, and NORBERT HAHN
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Appeal 2012-012254
Application 12/813,746
Technology Center 1700
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Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1–14. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to “polymer polyols prepared from
an initiator comprising an azo compound that is free of nitrile groups, and to
a process for the preparation of these polymer polyols” (Spec. 1:6–8).
Claim 1 is illustrative:
1. A polymer polyol comprising the reaction product of:
(1) a base polyol,
(2) a preformed stabilizer,
and
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Application 12/813,746

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(3) at least one ethylenically unsaturated monomer, in the presence of
(4) at least one free-radical polymerization initiator comprising an azo
compound that is free of nitrile groups, and, optionally,
(5) a polymer control agent.

Appellants appeal the following rejection:
Claims 1–14 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Adkins et al. (US 7,179,882 B2, patented Feb. 20, 2007) in view of Cerf et
al. (US 6,642,306 B1, patented Nov. 4, 2003).

Appellants argue the claims as a group of which we select claim 1 as
representative.
ISSUE
Did the Examiner reversibly err in concluding that it would have been
obvious to substitute Cerf’s free-radical initiator that is an azo compound
free of nitrile for Adkins azo free radical initiator because Cerf teaches that
the azo free radical initiator free of nitrile is less toxic and has a lower
melting point? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
The Examiner finds that Adkins discloses all the limitations of claim
1, except for the particular a free radical polymerization initiator comprising
an azo compound that is free of nitrile groups (Final Off. Act. 2). The
Examiner finds that Cerf discloses using a free radical initiator comprising
an azo compound that is free of nitrile group that advantageously has low
toxicity and low melting point (Final Off. Act. 3). The Examiner concludes
that it would have been prima facie obvious to substitute Cerf’s azo free
radical polymerization initiator free of nitrile for Adkins free radical initiator
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Application 12/813,746

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because Cerf’s initiator has low toxicity and a low melting point (Final Off.
Act. 3).
Appellants argue that one of ordinary skill in the art would not have
substituted Cerf’s azo free radical initiator free of nitrile for Adkins azo free
radical initiator because there is no reasonable expectation that doing so
would have produced improved polymer polyols (App. Br. 4). Appellants
refer to the Examples in their Specification as showing that using a azo free
radical initiator free of nitrile produces a polymer polyol having increased
viscosity and increased polymer residue (App. Br. 4–5). Appellants contend
that the process disclosed in Cerf is not the industry standard in that no
vacuum stripping of the crude polymer polyol product is disclosed such that
one of ordinary skill would not have looked to Cerf for a free radical
initiator (App. Br. 3). Appellants contend that the Cerf does not give one of
ordinary skill in the art a clear indication of if and/or how the azocarboxylic
acid ester initiators disclosed therein affect the viscosity of the resultant
polymer polyol (App. Br. 4). Appellants further contend that Examples 10
and 11 in the Specification show that azocarboxylic acid esters provide
additional improvements to the process such as reduced reactor fouling
(App. Br. 7). Appellants contend that the teachings of Adkins and Cerf
would not have led one of ordinary skill in the art to reasonably expect that
the substitution of Cerf’s nitrile-free azo free radical polymerization initiator
for Adkins conventional azo free radical initiator would have reduced
reactor fouling, decrease polymer residue and improve viscosity (App. Br.
6–7). Appellants contend that the Examiner engaged in impermissible
hindsight (App. Br. 8).
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Application 12/813,746

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Appellants’ arguments are not persuasive because they refer to
limitations or properties not recited in the claims. Specifically, claim 1 is
broad in that it does not recite any numerical amounts for the various
components of the composition or any particular properties of the
composition, such as viscosity or polymer residue amounts. Accordingly,
Appellants’ arguments regarding such features are directed to subject matter
not in the claim. Moreover, the showing provided by Appellants by way of
examples in the Specification is narrower than the scope of claim 1.
Appellants have not shown specifically any error in the Examiner’s reasons
(i.e., less toxicity and lower melting point) for substituting Cerf’s initiator
for Adkins initiator. Indeed, Cerf teaches the free radical initiator has such
properties so that the Examiner’s rejection is not based upon hindsight, but
rather the teachings of the references.
On this record, we affirm the Examiner’s § 103 rejection of claims 1–
14 over Adkins in view of Cerf.
DECISION
The Examiner’s decision 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).

ORDER
AFFIRMED

cdc