Ex Parte Hinz et al

Board of Patent Appeals and Interferences

Apr 28, 2010

11092098 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WERNER HINZ, EDWARD M. DEXHEIMER, JOHN BROGE,
RAYMOND NEFF, and THEODORE M. SMIECINSKI
____________________

Appeal 2009-009913
Application 11/092,098
Technology Center 1700
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Decided: April 28, 2010
____________________

Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 37, all of the claims pending
in the above-identified application. We have jurisdiction pursuant to
35 U.S.C. § 6.
We AFFIRM.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of forming
a polyethercarbonate polyol. Claim 1 is illustrative:
1. A method of forming a polyethercarbonate polyol, said method
comprising the steps of:

(A) providing a catalyst comprising a multimetal cyanide compounds;

(B) reacting an H-functional initiator, an alkylene oxide, and carbon
dioxide in the presence of the multimetal cyanide compound in a reactor to
form the polyethercarbonate polyol comprising the general formula
[A]a[B]b[C]c, wherein,

A is a polyethercarbonate segment, B is a polycarbonate
segment, and C is a polyether segment wherein each of A, B, and C are
defined by the presence of CH3 group resonances of alkylene oxide-based
ether chain units at separate peaks in a 1H NMR spectrum of the
polyethercarbonate polyol, and

a is a value from 1-98, b is a value from 0-60, and c is a value
from 0-98 so long as b and c are not both equal to 0,

with the values for each of a, b, and c in area % based on the
presence of the CH3 group resonances in the 1H NMR spectrum and on the
integration of the area under the respective peaks that are present in the 1H
NMR spectrum; and

(C) selectively controlling the value of a, b, or c.

The Examiner maintains1 the following rejections:

1 As is apparent from page 2 of the Answer, the Examiner has withdrawn the
§ 112, second paragraph rejection set forth in the Final Office Action mailed
on Apr. 25, 2008.
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1. Claims 1-37 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Hinz '278 (U.S. Patent No. 6,762,278 B2, issued Jul.
13, 2004);
2. Claims 1-37 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hinz '232 (U.S. Patent Application Publication No.
US 2003/0149232 A1, published Aug. 7, 2003);
3. Claims 1-37 under nonstatutory obviousness-type double patenting
as unpatentable over claims 1-24 of U.S. Patent No. 7,268,204 B2
(issued Sep. 11, 2007) and claims 1-20 of U.S. Patent No. 6,762,278
B2 (issued Jul. 13, 2004); and
4. Claims 1-37 are provisionally rejected under nonstatutory
obviousness-type double patenting as unpatentable over claims
1-36 of copending U.S. Patent Application No. 11/092,107 (filed Mar.
29, 2005).2
With respect to rejection (1), Appellants focus their arguments on
claims 1-3 and 34-36. Accordingly, we address Appellants' arguments
regarding the rejection with respect to claims 1-3 and 34-36. See 37 C.F.R.
§ 41.37(c)(1)(vii).
With respect to rejection (2), Appellants state that Hinz '232 "is
merely the published application of the issued patent Hinz et al. (6,762,278).
. . . in terms of what these two documents actually disclose, their disclosures
are identical. Thus, for clarity and convenience purposes, only the '278

2 Appellants indicate that rejections (3) and (4) are not being appealed (App.
Br. 5-6). We view this action by Appellants as a waiver and sustain these
rejections. We further note that U.S. Patent Application No. 11/092,107 has
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patent is referenced below." (App. Br. 17). Therefore, the Examiner's
rejection of claims 1-37 in rejection (2) (i.e., the § 102(b) rejection over
Hinz ‘232) stands or falls with respect to our analysis of claims 1-3 and
34-36 in rejection (1) (i.e., the § 102(e) rejection over Hinz ‘278).

Claim 1
ISSUE
Did the Examiner err in determining that Hinz '278 teaches the
formula [A]a[B]b[C]c and "selectively controlling the value of a, b, or c" as
required by independent claim 1? We decide this issue in the negative.

FINDINGS OF FACT
1. The Specification discloses that
the present invention accomplishes this selective control by
modifying at least one of the reaction parameters. As will be
realized from the description below, there are a wide variety of
reaction parameters including, but not limited to, temperature of
the reactor, pressure of the reactor, concentration of the
multimetal cyanide compound, concentration of the H-
functional initiator, concentration of the alkylene oxide,
concentration of the carbon dioxide, a length of time that the
alkylene oxide is fed into the reactor, a rate that the alkylene
oxide is fed into the reactor, i.e., the amount of alkylene oxide
that is fed into the reactor over the length of time, at what point
in time during the method the reactor dioxide pressurized with
carbon dioxide, availability of carbon dioxide, choice of H-
functional initiator, composition of the catalyst, amount of
water in the reactor, and a ratio of alkylene oxide: carbon
dioxide.

issued as U.S. Patent No. 7,671,228 such that the rejection (4) is no longer a
provisional rejection.
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(Spec. ¶ [0030]).
2. The Specification discloses that
[s]teps to modify the reaction parameters include, but are not limited
to, modifying and/or ramping up or down the temperature of the
reactor, modifying and/or ramping up or down the pressure of the
reactor, modifying the concentration of the multimetal cyanide
compound, modifying the concentration of the reactants, extending
the length of time that the alkylene oxide is fed into the reactor,
ramping up or down the rate that the alkylene oxide is fed into the
reactor, feeding the alkylene oxide into the reactor in such a manner
that a concentration of the alkylene oxide in the liquid reaction phase
of from 4-20%, preferably from 8-12%, is maintained, selectively
restricting an availability of the carbon dioxide for at
least a portion of the length of time that the alkylene oxide is fed into
the reactor, ramping up or down the temperature of the reactor during
the feeding of the alkylene oxide into the reactor, ramping up or down
the temperature of the reactor during the course of the alkylene oxide
reaction, selecting an H-functional initiator with a specific number-
average and/or weight average molecular weight, or a specific
polydispersity, or a specific functionality, agitating the reactor during
the reacting of the reactants, providing a sterically-hindered chain
transfer agent, activating the catalyst, and restricting an amount of
water in the reactor. As alluded to above, the method of the present
invention synergistically controls specific reaction parameters and
modifies at least one of the reaction parameters to selectively control
the amount of the segments in the forming PEC polyol. As used
throughout the subject description, the terminology ramping, ramp, or
ramped accounts for increasing (ramping up) the reaction parameter
and also for decreasing (ramping down) the reaction parameter.
Preferably the reaction parameters, when ramped, are ramped at a
constant rate.
(Spec. ¶ [0031]).
3. The Specification discloses that the alkylene oxide may be propylene
oxide. (Spec. ¶ [0036]). The Specification discloses that the H-
functional initiator may include glycerine. (Spec. ¶ [0049]). The
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Specification also discloses that “the H-functional initiator . . . [may]
include one or more alkylene oxide groups for the catalyst to function
more efficiently. In such a case, the H-functional initiator is first reacted
with at least one alkylene oxide to form an oligomer prior to it use to
form the PEC polyol.” (Spec. ¶ [0049]).
4. The Specification discloses that the temperature of the reactor may be
"between 40 and 180°C . . . most preferably between 65 and 135 °C"
(Spec. ¶ [0032]; see also Spec. ¶¶ [0061] and [0062]).
5. Hinz '278 teaches that
Scaled Up Preparation of Polyethercarbonates
. . . the polyethercarbonate polyol formation reaction was scaled
up to a larger two gallon autoclave using a multimetal cyanide
compound prepared according to the present invention. The general
procedure was as described below. A clean and dry 2 gallon
autoclave, equipped with an agitator, external heating, internal cooling
via a cooling coil, a PO [i.e., propylene oxide] feed line, a gas feed
line, a temperature sensor and a pressure sensor, was charged with a
purified initiator polyol, described above, and the multimetal cyanide
compound catalyst prepared according to the present invention. The
initiator-catalyst mixture is heated to 130° C. under vacuum (<1 mm
Hg) for 2 hours to remove any residual moisture. The vacuum system
is disconnected and the reactor pressurized to 0 psi using Argon gas.
Then 200 g of propylene oxide is added and the pressure increase in
the reactor is monitored. Within 15-30 minutes the reactor pressure
declines back to 0 psi, indicating that the multimetal cyanide
compound catalyst is active. An amount of 2,500 g of PO monomer is
then added at 130° C. at a constant rate over 3 hours. At 10 minutes
after commencement of the PO feed, the reactor is pressurized with
CO2 gas (Air Products, research grade)

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(Hinz '278, col. 13, l. 61 to col. 14, l. 15; see also col. 11, ll. 57-58). In this
regard, Hinz '278 teaches that the purified initiator polyol is "an adduct of
glycerine and propylene oxide monomer." (Hinz '278, col. 12, ll. 10-11).

PRINCIPLES OF LAW
"During examination, 'claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.'" In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Also, as stated in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

127 F.3d 1048, 1054 (Fed. Cir. 1997).
As stated in In re Best:

Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, 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.
See In re Ludtke, supra. Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness' under 35 U.S.C. § 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.
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562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted). See also, In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (explaining similar processes and
identical materials would be expected to produce products of identical
composition).
In addition, "[t]he discovery of a new property or use of a previously
known composition, even when that property and use are unobvious from
prior art, can not impart patentability to claims to the known composition."
Spada, 911 F.2d at 708.

ANALYSES AND CONCLUSIONS
Appellants argue that Hinz '278 "does not disclose with any
specificity whatsoever a formula for its polyethercarbonate (PEC) polyol, let
alone a PEC polyol of a formula of [A]a[B]b[C]c, where A, B, C, a, b, and c
are specifically defined." (App. Br. 17). In addition, Appellants argue that
Hinz '278 "does not disclose and/or teach the ratios for a, b, and
c as defined in claim 1 of the present application." (App. Br. 18).
Appellants also argue that "the Examiner has failed to carry the
burden of proving that the step of 'selectively controlling a, b, or c', as
claimed in independent claim 1, is necessarily present within the teachings
of Hinz et al., as required for the Examiner to establish inherent anticipation
of claim 1." (Reply Br. 4). In this regard, Appellants argue that
the Examiner's interpretation of this claim element is improper.
. . . The step of "selectively controlling" clearly requires an
affirmative step and/or decision itself as to manipulation of the
reaction parameters for the purpose of affecting the values of a,
b, or c and cannot be satisfied through mere passivity with
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regard to the attained values of a, b, or c. . . . Blindly setting a
reaction parameter without recognizing or considering the
values of a, b, or c to be attained cannot be reasonably
interpreted to represent control of the values of a, b, or c; there
is a clear difference between setting reaction parameters to
achieve any result and setting reaction parameters to achieve a
particular result.
(Reply Br. 5-6).
To address these arguments, we begin by construing the claim term
“selectively controlling the value of a, b, or c." While this claim term is not
expressly defined in the Specification, the Specification discloses that
"selective control" may be accomplished by "modifying at least one . . .
reaction parameter[ ]" such as the pressure of the reactor, the amount of
alkylene oxide that is fed into the reactor over the length of time, or the
amount of water in the reactor. (FF 1). The Specification also discloses that
the “[s]teps to modify[ing] the reaction parameters include, but are not
limited to . . . modifying and/or ramping up or down the pressure of the
reactor . . . ramping up or down the rate that the alkylene oxide is fed into
the reactor, . . . and restricting an amount of water in the reactor. . . .
Preferably the reaction parameters, when ramped, are ramped at a constant
rate.” (FF 2).
Based on these facts, we, like the Examiner, determine that the
broadest reasonable meaning of “selectively controlling the value of a, b, or
c” in light of the Specification is modifying and/or ramping up or down at
least one reaction parameter such as the reactor's pressure; the feed rate of
alkylene oxide into the reactor; or the amount of water in the reactor (e.g., by
restricting the amount of water in the reactor).
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In light of this proper construction of the term “selectively controlling
the value of a, b, or c,” we agree with the Examiner's determination at pages
4 and 5 of the Answer that Hinz '278 meets the disputed "selectively
controlling" claim feature since Hinz '278 teaches "control of alkylene oxide
. . . [and] limiting and minimizing the employment of water," which is
consistent with the proper construction of this disputed claim term. See
Morris, 127 F.3d at 1054.
In this regard, Hinz ‘278 teaches “[heating the] initiator-catalyst
mixture . . . to 130° C. . . . to remove any residual moisture” (i.e., modifying
or ramping down the amount of water in the reactor by restricting via heat
the amount of water in the reactor). (FF 5). Hinz '278 also teaches
preparing a polyethercarbonate polyol by adding 2,500 g of PO (propylene
oxide) monomer at a constant rate over 3 hours (i.e., modifying or ramping
up the feed rate of alkylene oxide into the reactor). Id. In addition, Hinz
'278 teaches that “at 10 minutes after commencement of the PO feed, the
reactor is pressurized with CO2 gas” (i.e., modifying or ramping up the
reactor's pressure). Id.
Thus, because the Examiner's reliance on Hinz '278 to satisfy the
disputed claim feature is consistent with its proper construction discussed
above, Appellants’ arguments that Hinz '278 fails to teach the "selectively
controlling" feature are without persuasive merit.
With respect to Appellants' argument that Hinz '278 "does not disclose
. . . a PEC polyol of a formula of [A]a[B]b[C]c, where A, B, C, a, b, and c are
specifically defined" as required by claim 1, Appellants do not specifically
dispute the Examiner's determination that
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Even though Hinz et al. does not particularly recite the
structure employed by appellants in describing its
polyethercarbonate polyols of their invention, inherency in the
instant case is maintained to be evident based on the closeness
of materials, amounts, and conditions employed. Hinz et al.
discloses controlled feeds of alkylene oxide, carbon dioxide to
the initiator and catalyst system of their invention under
controlled temperature and pressure conditions such that no
difference is seen between what is fully provided for by its
disclosure and the requirements of appellants' claims.

(Compare Ans. 7 with App. Br. 16-20 and Reply Br. 2-8) (emphasis added).
In this regard, Hinz ‘278, like Appellants, teaches a
polyethercarbonate polyol comprising, inter alia, a purified initiator polyol,
which is an adduct of glycerine (H-functional initiator) and propylene oxide
(alkylene oxide) monomer, a multimetal cyanide compound catalyst, and
additional PO (i.e., propylene oxide) monomer. (FF 5; see also FF 3 and 4).
Hinz '278, like Appellants, teaches that these ingredients are then placed in
an autoclave and heated to 130° C to form a polyethercarbonate polyol. Id.
As noted supra, Hinz ‘278 teaches a process that, like Appellants’ process,
“selectively control[s]” relative amounts (i.e., a, b, and c) of components A,
B, and C of the polyethercarbonate polyol as that claim term is properly
construed.
Thus, we agree with the Examiner that there is a reasonable basis to
believe that Hinz '278's polyethercarbonate polyol possesses the
characteristics recited in the claimed formula (i.e., components A, B, and C
having amounts of a, b, and c within the claimed ranges). Best, 562 F.2d at
1255; see also Spada, 911 F.2d at 708.
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Thus, it follows that the Examiner did not err in determining that Hinz
'278 teaches the formula [A]a[B]b[C]c and "selectively controlling the value
of a, b, or c" as required by independent claim 1.

Claims 2 and 3
Appellants argue that
The Examiner has never rejected these two dependent claims
with any specificity whatsoever. . . . even if it is the Examiner's
position that the PEC polyol of the '278 patent does have the
general formula of [A]b[B]b[C]c as defined in claim 1, such a
position cannot be extended to that which is claimed in
dependent claims 2 and 3 where [B] and [C] are specifically
required and in specific amounts.

(App. Br. 20). In other words, Appellants argue that Hinz '278 does not
teach the amounts of a, b, and c within the ranges of a, b, and c required by
claims 2 and 3.
In reference to our above discussion, we agree with the Examiner that
the similarity of Hinz ‘278’s process and starting materials to the claimed
process provides a reasonable basis to believe that Hinz '278's
polyethercarbonate polyol possesses the characteristics recited in the
claimed formula (i.e., values of a, b, and c within the ranges required by
claims 2 and 3). Thus, Appellants’ argument is unpersuasive of reversible
error.

Claims 34-36
Appellants argue that
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These claims specifically require the method to further include
the step of restricting an amount of water in the reactor (claim
34). Claims 35 and 36 further define the ppm level to which the
water in the reactor is restricted. . . . it is clear that the '278
patent to Hinz et al. does not disclose, teach, or suggest the
claimed method including the specific step of restricting water
... let alone restricting water to the particular levels defined in
claims 35 (< 100 ppm) and 36 (< 10 ppm).

(App. Br. 21).
Appellants, however, do not specifically dispute the Examiners'
finding that Hinz '278 teaches these disputed claim features since "Hinz et
al. teaches . . . the employment of water to such a degree . . . in its
preparations that anticipation of the water limiting embodiments of
appellants' claims is evident." (Compare Ans. 6 with App. Br. 16-20 and
Reply Br. 2-8).
Moreover, Hinz ‘278 teaches using a “dry 2 gallon autoclave” to form
a polyethercarbonate polyol via, inter alia, “[heating the] initiator-catalyst
mixture . . . to 130° C under vacuum (< 1 mm Hg) for 2 hours to remove any
residual moisture”. (FF 5) (emphasis added). In other words, Hinz '278
teaches removing via heat all water, which meets the water restriction
features of claims 34-36.
Thus, Appellants' argument is unpersuasive of reversible error.

DECISION
For the above reasons, the Examiner’s rejections (1)-(4) are sustained.
Accordingly, the Examiner's decision is affirmed.

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TIME PERIOD
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) (2009).
AFFIRMED

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