Ex Parte Byers et al

Patent Trial and Appeal Board

Aug 5, 2016

13083942 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/083,942 04/11/2011
66767 7590 08/09/2016
MERCHANT & GOULD CHEVRON PHILLIPS
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
JimD. Byers
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.
60293.0046USU1 9216
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
USPT066767@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM D. BYERS, MICHAELS. MATSON, and
MITCHELL D. REFVIK1
Appeal2015-001720
Application 13/083,942
Technology Center 1700
Before: ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants timely appeal under 35 U.S.C. § 134(a) from a rejection2
of claims 11-20. (App. Br. 8.) We have jurisdiction. 35 U.S.C. § 6(b). We
affirm.
1 The real party in interest is identified as Chevron Phillips Chemical
Company LP (Appeal Brief, filed July 28 2014 ("App. Br."), 2.)
2 Final Office Action mailed January 31 2014 ("Final Rejection"; cited as
"FR.").
Appeal2015-001720
Application 13/083,942
A. Introduction3
OPINION
The subject matter on appeal relates to "[p ]rocesses for oligomerizing
one or more bis(beta-hydroxy) polysulfides in the presence of acid catalyst"
and "oligomer compositions comprising oligomers produced by the
disclosed processes." (Spec. 1, 11. 22-23, 33-34.) The '942 Specification
notes that "there is not an industry-accepted cutoff for the number of repeat
units which constitute an 'oligomer' as opposed to a 'polymer"' and defines
the term "oligomer" as "refer[ ring] to compounds which incorporate from 2
to 60 units derived from the monomer utilized to form the oligomer." (Id. at
10, 11. 34-35; 11, 11. 1-2.)
Representative claim 11 recites:
11. A composition comprising oligomers of a bis(beta-hydroxy)
polysulfide, the composition having:
(i) a weight-average molecular weight (Mw) in a range
from 250 to 15,000 g/mol; and
(ii) an area percentage of cyclic oligomer compounds,
% cyclics, characterized by at least one of the following
equations:
% cyclics :S (4.18 x 10-5 * Mw) + 0.0162; and/or
0.25 *{(2.32 x 10-5 * Mw) + 0.009]} :S % cyclics :S 1.75 *{(2.32
x 10-5 * Mw) + 0.009]}.
(Claims Appendix, App. Br. 25.)
The Examiner maintains the following grounds of rejection: 4
3 Application 13/083,942, Oligomerization of Bis(Beta-Hydroxy)
Polysulfzdes Through Etherification, filed April 11 2011. We refer to the
'"942 Specification," which we cite as "Spec."
4 Examiner's Answer mailed September 25 2014 ("Ans.").
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Application 13/083,942
A: Claims 11-20 stand rejected under
35 U.S.C. § 102(b) based on Rappoport. 5
B: Claims 11-20 stand rejected under
35 U.S.C. § 103(a) based on Rappoport.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejection A: Claim 11 6
The '942 Specification provides that the oligomers recited in claim 11
may be produced by "contacting an acid catalyst and a composition
comprising ... a bis(beta-hydroxy) polysulfide"7 and "oligomerizing
bis(beta-hydroxy) polysulfide." (Spec. 1, 11. 24-27.) The '942 Specification
provides that a variety of acid catalysts may be used including "a mineral
acid" such as "phosphoric acid" as well as "an organic acid or an inorganic
acid." (Id. at 25, 11. 8-10, 14.) The '942 Specification provides a particular
example of producing the recited oligomers with dihydroxydiethyl disulfide
and 70% "methane sulfonic acid" maintained "in the 135-146 °C range" for
5 Leonid Rappoport et al, Poly(thioesters), Their Applications and
Derivatives, U.S. Patent Application Publication No. 2007/0015902 Al,
published January 18 2007 ("Rappoport").
6 Claims 12-20 stand or fall with claim 11 with respect to the anticipation
rejection. (App. Br. 10.)
7 The '942 Specification provides that "a 'polysulfide' refers to a compound
having an Sx unit, where xis greater or equal to 2." (Id. at 10, 11. 22-23.)
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Application 13/083,942
"about 1 hour." (Spec. 52, 1. 23-53, 1. 2; see also App. Br. 13 (citing
Example 10 of the '942 Specification); Ans. 5 (citing the same).)
The reference Rappoport, on the other hand, discloses a reaction "by
polyetherification of DiHEDS8 []in the presence of acidic catalysts
(preferably phosphoric acid) at 140-180° C." (App. Br. 12 (citing
Rappoport ii 243); Ans. 2 (citing the same).)
While the Examiner acknowledges that Rappoport does not disclose
the "weight-average molecular weight" or the "% cyclics" recited in claim
11, the Examiner concludes that the oligomers recited in claim 11 are
produced by a process that is identical to or substantially identical to the
prior art process disclosed in Rappoport, and are therefore anticipated or
rendered obvious. (Ans. 4; see In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) ("[W]hen the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.").)
Appellants first argue that the anticipation rejection is in error because
"there is no data on the molecular weight or the percentage of cyclic
oligomer compounds anywhere within the four comers of Rappaport."
(App. Br. 11) (emphasis in original.) While "every limitation positively
recited in a claim must be given effect in order to determine what subject
matter that claim defines," the law is well-established that "recitation, in a
claim to a composition, of a particular property said to be possessed by the
recited composition, be that property newly-discovered or not, does not
necessarily change the scope of the subject matter otherwise defined by that
8 DiHEDS is a commercial product that is mostly di(hydroxyethyl)disulfide.
(Rappoport ii 241.)
4
Appeal2015-001720
Application 13/083,942
claim." Jn re Wilder, 429 F.2d 447, 450 (CCPA 1970). The issue here is
therefore whether the Examiner has met the initial burden of proof in
establishing a prima facie case of anticipation - whether the Examiner has
established a reasonable belief that the prior art reaction would produce a
product that is identical to or substantially identical to the claimed product.
See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Appellants argue that the prior art reaction using "phosphoric acid"
differs from the reaction at issue which uses methane sulfonic acid. (App.
Br. 13; Reply 2-3.)9 The Examiner points out, however, that Rappoport
broadly discloses using "acid catalysts" not limited to phosphoric acid for
the prior art reaction. (Ans. 5 (citing Rappoport ii 243).) The Examiner also
points out that the '942 Specification states that a wide range of acid catalyst
may be used to produce the claimed product including "mineral acids" such
as "phosphoric acid" as well as "organic acids" such as "methane sulfonic
acid." (Ans. 5 (citing Spec. at 25, 11. 8-10; 26, 1. 18).) Whereas the prior art
discloses a product from the "polyetherification of DiHEDS [] in the
presence of acidic catalysts (preferably phosphoric acid) at 140-180° C"
(Rappoport ii 243), the '942 Specification provides that the claimed product
may be formed by "contacting an acid catalyst and ... a bis(beta-hydroxy)
polysulfide" (Spec. at 1, 24-25). Because the record does not show that
either the prior art reaction or the reaction in the '942 Specification is limited
to using only phosphoric acid and that different products would result from
these reactions, no reversible error has been shown in the Examiner's
finding that "the claimed and prior art products ... are produced by identical
9 Reply Brief filed November 24 2014 ("Reply").
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Application 13/083,942
or substantially identical processes[.]" See Jn re Best, 562 F.2d 1252, 1255
(CCPA 1977).
Appellants' argument that the prior art reaction "never produces
polythioethers, the products/compositions of which the claims on appeal are
directed" (Reply Br. 4) does not show patentability because it is not always
necessary for an anticipating reference to explicitly disclose the claimed
product. "Where, as here, the claimed and prior art products ... are
produced by identical or substantially identical processes," the court in Best
states:
the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the
characteristics of his claimed product. [citation omitted] Whether
the rejection is based on "inherency" under 35 USC 102, on
"prima facie obviousness" under 35 USC 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products.
Best, 562 F.2d at 1255.
Appellants in this case cite to Table A and Figure 1 of the '942
Specification (reproduced below) to show that "process variables
significantly affect the composition comprising oligomers of a bis(beta-
hydroxy) polysulfide" and that the reaction in Rappoport does not produce
the recited oligomers. (App. Br. 14)
6
Appeal2015-001720
Application 13/083,942
Table .A. Ces·tairi Process Variables for f.'om1~aratfre and Inventive Examples
FlC. l
bis(beta-hydrnxy)
r:aohsulfide
Catalyst
Tt,S
p-tohu:me
sulfonk add
84-86 "C
Yes
Euunples 9~1 t,
15,aud 18
OiHEOS
meth:me
sulfonk add
135-146 "C
No
/'
_,/
/'
----------~:: _______ _
.,,./
//
//
"'.;:~?''/.,.. --------------~.,_.,.... _ _.,... .... _....._.. .... ___ .... _
~' _...../"''
f, .,.,,.,,.
0 / i- ;~% ~7~:.,...... .......... .,...... ...... ..._ ___ ,.,,..V'i'"~~~~~--~-~----~·---·
~ / .
~ 1'!% +---------lli-'-..,,,_/_'_/_,,._----____________ , __ ._ ................ .---· ------
Appellants argue that Table A and Figure 1 shows the "significant[]
impact" that process variables such as "the type of acid catalyst," "the
amount of catalyst used," "the specific solvent type," "the amount of solvent
used," "the reaction time," and "the reaction pressure" would have on "the
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Appeal2015-001720
Application 13/083,942
composition that is produced." (App. Br. 16.) Appellants argue that
because Rappoport is silent as to each of these variables, "it is improper for
the PTO to conclude that Rappoport' s process is substantially identical to the
process utilized to produce the claimed compositions." (Id.)
The Examiner responds that the prior art reaction differs from the
"Examples 1-3" in Table A as it does not use a solvent and does not occur at
a temperature range between 140-180 °C. (Ans. 10.) The Examiner
therefore finds that these examples cannot show what product the prior art
reaction may produce.
Moreover, neither Table A nor Figure 1 shows - and Appellants do
not argue - that the difference in the end product is attributable to
parameters other than the presence of a solvent and/or the difference in
temperature. While Appellants argue that Table A and Figure 1 "show that
varying some of these parameters can produce different compositions, and
that some of these combinations produce compositions which are not within
the scope of the claims on appeal" (Reply 5), Appellants do not specify what
"some of these parameters" or "some of these combinations" may be -
particularly for the reaction in Rappoport which is without a solvent and at a
temperature range overlapping with that of an inventive example in the '942
Specification.
As the Examiner points out, the examples shown in Table A occur at
different process conditions and Appellants have not shown how each of the
process variables, individually or collectively, may impact the type of end
product produced. (Ans. 11.) For example, Appellants do not specify- and
we do not find in the record before us - the reaction pressure for Examples
1-3. (See Spec. 47--49.) There is therefore no evidence in this record
8
Appeal2015-001720
Application 13/083,942
showing whether the reaction pressure alone impacts the type of product
produced as Appellants appear to assert.
Because Table A and Figure 1 compare the recited oligomers to
products from a reaction that is different from the prior art reaction,
Appellants have not shown "that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product." Best, 562
F.2d at 1255.
We are also not persuaded that the additional temperature ranges
disclosed in Rappoport sufficiently rebut the prima facie case of anticipation.
Other than the temperature range of 140-180° C for the reaction "by
polyetherification of DiHEDS 10 [] in the presence of acidic catalysts"
(Rappoport ,-i 243), Rappoport discloses additional temperature ranges that
are applicable to reactions that are different from the "polyetherification of
DiHEDS." That is, these additional temperature ranges appear to be
applicable to reactions for making poly( thioesters) and not the reaction that
the Examiner finds to be identical or substantially identical to the reaction in
the '942 Specification. (See Rappoport ,-i 244.) Again, a product produced
by a reaction different from the prior art reaction does not show "that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product." Best, 562 F.2d at 1255.
Because the reaction in the applied reference uses "DiHEDS in the
presence of acidic catalysts ... at 140-180° C" which is identical to or
substantially identical to the reaction that produces the recited oligomers, the
10 DiHEDS is a commercial product that is mostly di(hydroxyethyl)disulfide.
(Rappoport ,-i 241.)
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Application 13/083,942
prior art product appear to inherently produce the recited oligomers. Thus, it
appears that claim 11 is anticipated by Rappoport under 35 U.S.C. § 102(b).
Rejection B: Claim 11 11
Because anticipation is the epitome of obviousness, claim 11 appears
to have been obvious over Rappoport. See In re May, 574 F.2d 1082, 1089
(CCPA 1978), In re Skoner, 517 F.2d 947, 950 (CCPA 1975), In re Pearson,
494 F.2d 1399, 1402 (CCPA 1974).
C. Order
It is ORDERED that the rejections of claims 11-20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
11 Claims 12-20 stand or fall with claim 11 with respect to the obviousness
rejection. (App. Br. 19.)
10