Ex Parte Reese

Patent Trial and Appeal Board

Oct 24, 2017

13528909 (P.T.A.B. Oct. 24, 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.
13/528,909 06/21/2012 Jack R. Reese BMS122006/MD08-22 4509
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
10/26/2017 EXAMINER
MURESAN, ANA Z
ART UNIT PAPER NUMBER
1671
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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. REESE1
Appeal 2016-000385
Application 13/528,909
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a continuous process for the production of a
polyoxyalkylene polyether polyol having a hydroxyl content of from about
3.4 to about 12.1% by weight. Claims 1—28 are on appeal as rejected under
35 U.S.C. § 103(a) and as provisionally rejected for obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the obviousness rejections and decline to reach the merits
of the provisional double patenting rejection.
1 Appellant identifies the Real Party in Interest as “Bayer MaterialScience
LLC.” App. Br. 1.
Appeal 2016-000385
Application 13/528,909
STATEMENT OF THE CASE
The Specification states, “[t]he preparation of polyoxyalkylene
polyols by double metal cyanide (DMC) catalysts is known” and “[w]hile
double metal cyanide catalysts provide numerous advantages in preparing
polyoxyalkylene polyols, there are, unfortunately, some disadvantages to
this type of catalysis. . . . These disadvantages include the tendency of the
catalyst to deactivate.” Spec. 1:11—29. The Specification further states:
The present invention allows the preparation of low
molecular weight polyoxyalkylene polyether polyols by a
continuous process in which a low molecular weight starter is
alkoxylated in the presence of a double metal cyanide catalyst.
It has been found that carefully maintaining the oxyalkylation
reaction at a sufficiently high temperature prevents catalyst
deactivation, even in the presence of high levels of low molecular
weight starters.
Id. at 3:21-27.
Claims 1, 18, 19, 21, 23, and 28 are independent claims. Claim 1 is
representative and is reproduced below:
1. A continuous process for the production of a
polyoxyalkylene polyether polyol having a hydroxyl content of
from about 3.4 to about 12.1% by weight, which comprises:
establishing oxyalkylation conditions in a continuous
oxyalkylation reactor in the presence of a double metal cyanide
catalyst;
continuously introducing alkylene oxide and a low
molecular weight starter into said continuous oxyalkylation
reactor, wherein said starter has a number average molecular
weight of from 50 to 250;
continuously recovering a partially oxyalkylated polyether
polyol from the continuous oxyalkylation reactor;
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Application 13/528,909
wherein (i) said oxyalkylation in the continuous
oxyalkylation reactor occurs at a sufficiently high temperature to
prevent deactivation of the DMC catalyst; (ii) the concentration
of unreacted alkylene oxide in the contents of the continuous
reactor is maintained at a level of from 1 to 3% by weight; and
(iii) the hydroxyl content of the reactor contents is maintained at
3.4 to 12.1% by weight;
and
allowing further reaction of the partially oxyalkylated
polyether polyol which is recovered from the continuous
oxyalkylation reactor to occur until the unreacted alkylene oxide
content of the mixture is reduced to 0.001% or less by weight
App. Br. 14 (Claims App’x).
The following rejections are on appeal:
Claims 1—28 stand rejected under 35 U.S.C. § 103(a) over Pazos.2
Final Action 6—8.
Claims 1—28 stand rejected under 35 U.S.C. § 103(a) over Sasaki.3 Id.
at 8—10.
Claims 1—28 stand provisionally rejected under the doctrine of non-
statutory obviousness-type double patenting over claims 1—28 of ’394
application.4 Id. at 12—13.
DISCUSSION
I. Obviousness
“[A] claim must be read in view of the specification of which it is a
part.” Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1248
2 U.S. Patent 5,777,177 (issued July 7, 1998) (“Pazos”).
3 PCT Pub. WO 2011/136367 A1 (published Nov. 3, 2011) (“Sasaki”)
(English translation via EPO/Espacenet).
4 Co-pending U.S. Patent Application 13/826,394 (“’394 application”).
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Application 13/528,909
(Fed. Cir. 1998). “The specification acts as a dictionary when it expressly
defines terms used in the claims or when it defines terms by implication.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Further, one “does not interpret claim terms in a vacuum, devoid of the
context of the claim as a whole.” Kyocera Wireless Corp. v. Int’l Trade
Com’n, 545 F.3d 1340, 1347 (Fed. Cir. 2003) (citingHockerson—
Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999)
(“[pjroper claim construction . . . demands interpretation of the entire claim
in context, not a single element in isolation.”)). In determining patentability,
“we must give effect to all claim limitations.” In re Angstadt, 537 F.2d 498,
501 (CCPA 1976).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993). “Even when obviousness is based on a single prior art reference,
there must be a showing of a suggestion or motivation to modify the
teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir.
2000). “[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). When a prima
facie case of obviousness has not been established, the rejection must be
reversed. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988).
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Application 13/528,909
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In reAller, 220 F.2d 454, 456 (CCPA 1955). However,
“[t]his rule is limited to cases in which the optimized variable is a ‘result-
effective variable.’” In re Applied Materials, Inc., 692 F.3d 1289, 1295
(Fed. Cir. 2012) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977));
see also In re Boesch, 617 F.2d 272, 276 (Fed. Cir. 1980) (“[Discovery of
an optimum value of a result effective variable ... is ordinarily within the
skill of the art.”).
Obviousness and Pazos
We find the Examiner has not established a prima facie case that
claim 1 would have been obvious over Pazos. In making this rejection, the
Examiner, in relevant part, states:
In example 1 (col. 9 and continuing on col. 10) of [Pazos], it is
disclosed that the process for producing polyol is conducted at
130 °C (instant claims recite temperature of at least 135 °C) and
that the reactor pressure drops as results for DMC catalyst
activation. . . .
The difference between instantly claimed process for
producing polyoxyalkylene polyether polyol and the process of
[Pazos], is that the process of prior art is conducted at a slightly
lower temperatures 130 °C compared to >135 °C of instantly
claimed process and does not disclose the specific build ratio of
the reactor as recited by instant claims 3, 4 or the pipe reactor,
instead it recites that reactors of the appropriate dimensions are
utilized for the process that overcome build ratio limitations.
Note the phrase “sufficiently high” recited by instant claim
1 pertaining to the temperature of the process is a relative term
which does not provide a standard for ascertaining the requisite
temperature required by the process. Disclosed on col. 10 lines
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4-7 of [Pazos] is that the reaction mixture is heated at 130 °C to
activate the catalyst.
Final Action 6—7. Thus, the Examiner concedes Pazos does not expressly
disclose the claimed “wherein (i) said oxyalkylation in the continuous
oxyalkylation reactor occurs at a sufficiently high temperature to prevent
deactivation of the DMC catalyst,” but determines that it is merely an
optimizable feature based on “the disclosure in the prior art, and the art
recognized problem or [sic] optimizing temperature.” Id. at 7—8.
Appellant argues the “Pazos reference uses a constant temperature of
130°C throughout the process,” which Appellant argues is not a “sufficiently
high temperature to prevent deactivation of the DMC catalyst” per the
examples described in the Specification and as claimed. App. Br. 8.
Appellant identifies that the Specification describes that a temperature of
130°C was used in Examples 1 and 3 and the DMC catalyst deactivated and
the process stopped, but contrasts this data with Examples 2 and 4, where a
temperature of 140°C was used and the process “continued with no
problems.” Id. Therefore, Appellant contends, “a process temperature of
140°C is a sufficiently high temperature,” as claimed, and Pazos does not
teach or suggest such a temperature. Id. Finally, Appellant argues Pazos
does not disclose information to provide a basis for the skilled artisan to
reasonably expect that the temperature of the reactor might be increased to
achieve a desired result, i.e., provide the “sufficiently high temperature” of
the claims, and that providing such a temperature is not merely optimizing
the temperature of Pazos because the Specification identifies that Pazos’s
temperature fails in view of the claim element. Id. at 9.
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Application 13/528,909
We are persuaded by Appellant’s arguments on Pazos. Pazos teaches
using a temperature of only 130°C to activate a catalyst and does not
recognize a need to keep that catalyst active or temperature’s role therein; it
does not suggest temperature is an optimizable variable. Appellant’s
Specification’s examples describe that 130°C may be hot enough to initially
activate a catalyst, but is not hot enough to keep the catalyst activated. The
Specification describes temperatures of 135°C, and specifically 140°C, are
sufficient. Even relying upon a KSR rationale, the Examiner must provide
some basis for optimizing a variable such as temperature, and no such
evidence has been provided. See MPEP § 2144.05(II)(B).
For the above reasons, we reverse this rejection.
Obviousness and Sasaki
In making a determination that the claims are obvious over Sasaki, the
Examiner stated:
it would have been obvious to one of ordinary skill in the art at
the time of invention was made, to utilize the process of
producing the polyoxyalkylene polyol by oxyalkylation in the
presence of a DMC catalyst and glycerol (glycerin) as starter, as
disclosed in [Sasaki] and optimize the process by employing the
appropriate built ratio and ratio, adjusting the temperature and
the pressure of the process to enhance the efficiency of the
process, because it involves preparation of the same product,
polyoxyalkylene polyol, by using the same starting materials,
catalyst and similar reaction parameters and would reasonable
expect the process of prior art to be successful for the instantly
claimed process of preparing said product. Absent a clear and
convincing showing of unexpected results, the instant invention
is found to be prima facie obvious over the prior art.
Final Action 10. The Examiner also identified certain limitations of some
claims and indicated where Sasaki teaches or suggests such limitations. Id.
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8—10. However, we conclude that the Examiner has failed to sufficiently
explain or show where Sasaki teaches or suggests each and every limitation
of the invention of independent claims 1, 18, 19, 21, 23, and 28.
Appellant argues Sasaki “requires three distinct polymerization steps,”
which “are completely separate processes,” where DMC catalyst is used in
just one of those steps. App. Br. 10. Appellant contrasts this with the
invention, which, they argue is “a continuous process which uses a DMC
(double metal cyanide) catalyst throughout the entire process.” Id. at 11.
Appellant argues the claims require continuous addition of a low molecular
weight starter (average mol.wt. of 50—250), but Sasaki does not continuously
add starter, and its disclosed starters, e.g., triol starter, have an average
mol.wt. outside the claimed range(s), i.e., 1500 or 1200. Id. Appellant also
argues Sasaki’s example(s) use a temperature of 130°C, which is not a
“sufficiently high temperature to prevent deactivation of the DMC catalyst.”
Id. Finally, Appellant argues:
a logical basis does not exist for one of ordinary skill in the art to
reasonably predict or expect from reading the Sasaki et al
reference that it is possible to control or increase the activity of a
continuous reactor system by maintaining a sufficiently high
temperature during oxyalkyation [sic] to obtain a
polyoxyalkylene polyether polyol having a total hydroxyl
content of from about 3.4 to about 12.1% by weight.
App. Br. 12-13.
While we are not persuaded by most of the above-identified
arguments by Appellant, we are persuaded by the last. The Examiner has
not identified where the “(iii) the hydroxyl content of the reactor contents is
maintained at 3.4 to 12.1% [or 3.4 to 9.1%] by weight.” We also note that
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much of the Examiner’s rationale for this rejection is unclear, including a
determination of where Sasaki discloses, specifically, continuously
recovering “partially oxyalkylated polyether polyol,” “(ii) the concentration
of unreacted alkylene oxide in the contents of the continuous reactor is
maintained at a level of from 1 to 3% by weight,” “allowing further reaction
of the partially oxyalkylated polyether polyol which is recovered from the
continuous oxyalkylation reactor to occur until the unreacted alkylene oxide
content of the mixture is reduced to 0.001% or less by weight,” or similarly
worded limitations, of the various independent claims. As our reviewing
court has held, each claim element must be considered in rejecting any claim
and the initial burden is upon the Examiner to set forth a prima facie case for
obviousness. See Angstadt, 437 F.2d at 501; Rijckaert, 9 F.3d at 1532.
Based on these findings we conclude that the Examiner has not
established a prima facie case that the independent claims would have been
obvious over Sasaki. Disclosing the claimed starting materials and some of
the claimed processing parameters is not enough to establish obviousness of
the claimed method(s), as a whole, over the prior art. Therefore, we reverse
this rejection.
II. Double Patenting
The Examiner makes the provisional double patenting rejection over
claims 1—28 of U.S. Patent Application No. 13/826,394, which the Examiner
finds are patentably indistinct from Appellant’s claim 1. Appellant does not
contest the substance of the provisional obviousness-type double patenting
rejection, and states “Appellant has previously stated on the record that a
terminal disclaimer will be filed once an indication of allowable subject
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Application 13/528,909
matter is received.” App. Br. 13. Under this Board’s precedential decision
in Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010), we decline to address
the merits of this rejection.
SUMMARY
The obviousness rejection over Pazos is reversed.
The obviousness rejection over Sasaki is reversed.
We decline to address the provisional double patenting rejection.
REVERSED
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