Ex Parte Van Eetvelde et al

Patent Trial and Appeal Board

Jun 13, 2018

13394208 (P.T.A.B. Jun. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/394,208 05/10/2012
23632 7590 06/15/2018
SHELL OIL COMPANY
POBOX576
HOUSTON, TX 77001-0576
FIRST NAMED INVENTOR
Els Van Eetvelde
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.
TS2388 USA P 9493
EXAMINER
RIETH, STEPHEN EDWARD
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
06/15/2018 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):
USPatents@Shell.com
Shelldocketing@cpaglobal.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELS VAN EETVELDE, MICHIEL BAREND ELEVELD,
WALTHERUS PETRUS CASPARUS MINEUR,
CHRISTOPHE MARTIN SWAN, and TIEW IMM TAN
Appeal2017-007147
Application 13/394,208
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek review under 35 U.S.C. § 134 from the Examiner's
maintained rejection under 35 U.S.C. § 103(a) of claims 1-8 over Ho2 in
view of Suzuki3 and of claims 1-3 and 6-8 over Sasaki4 in view ofOoms. 5
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Shell Oil Company is identified as the real party in interest. Appeal Br. 2.
2 Ho et al., US 5,236,961, issued August 17, 1993.
3 Suzuki et al., US 2005/0267279 Al, published December 1, 2005.
4 Sasaki et al., US 2008/0114088 Al, published May 15, 2008.
5 Ooms et al., US 6,468,939 Bl, issued October 22, 2002.
Appeal2017-007147
Application 13/394,208
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to a process for
preparing a polyurethane foam by reacting a polyether polyol and a
polyisocyanate. Specification filed March 5, 2012 ("Spec."), Abstract;
claims 1, 5. The polyether polyol used is prepared by use of a composite
metal cyanide complex, which is, preferably, not removed after preparing
the polyether polyol. Id. at 4, 11. 9--14. A phosphoric acid compound is
included in the quantity of polyether polyol and polyisocyanate reacted to
form the polyurethane foam; the included phosphoric acid compound can be
added to one, or both, of the polyether polyol and polyisocyanate, or can be
added during the reaction. Id. at 4, 1. 28-5, 1. 5.
Independent claims 1 and 5 are representative.
1. A process for preparing a polyurethane foam, wherein a
polyether polyol and a polyisocyanate are reacted in the
presence of:
a blowing agent;
of from I to 30 ppmw, based on the polyether pol yo 1, of
metals derived from a composite metal cyanide complex
catalyst; and
of from 0.5 to 100 ppmw, based on the polyether polyol,
of a phosphoric acid compound comprising a phosphoric acid
selected from orthophosphoric acid, polyphosphoric acid and
polymetaphosphoric acid, and/or a partial ester of such a
phosphoric acid.
5. A process for preparing a polyurethane foam,
comprising: preparing a polyether polyol by ring-opening
polymerization of an alkylene oxide in the presence of a
composite metal cyanide complex catalyst, wherein the amount
of the metals derived from the composite metal cyanide
complex catalyst is of from I to 30 ppmw based on the
polyether polyol;
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Application 13/394,208
adding a phosphoric acid compound comprising a
phosphoric acid selected from orthophosphoric acid,
polyphosphoric acid and polymetaphosphoric acid, and/or a
partial ester of such a phosphoric acid, in an amount of from 0.5
to 100 ppmw based on the polyether polyol, without removing
the composite metal cyanide complex catalyst, to obtain a
polyether polyol composition; and
reacting the polyether polyol composition with a
polyisocyanate in the presence of a blowing agent.
Appeal Brief filed August 4, 2016 ("Appeal Br."), 5---6.
DISCUSSION6
On this record, having reviewed the maintained grounds of rejection
set forth by the Examiner, Appellants' arguments, and the Examiner's
response, we are unpersuaded of reversible error.
For any ground of rejection, "the [E]xaminer bears the initial burden
... of presenting a prima facie case of unpatentability." In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). We consider the record to determine
whether Appellant has identified reversible error in the Examiner's rejection.
See In re 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," citing Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI
2010) (precedential)).
We add the following.
6 In this discussion, we refer to the Specification, the Final Office Action
dated March 16, 2016 ("Final Act."), the Appeal Brief, and the Examiner's
Answer dated December 1, 2016 ("Ans.").
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Application 13/394,208
Ho in view of Suzuki - Claims 1---8
The Examiner relies on Ho for its disclosure of processes for making
polyurethane foams from polyether polyol, polyisocyanate, and blowing
agents. Ans. 2--4. As noted by the Examiner, Ho desires having control
over the reaction rate between polyol and polyisocyanate. Id. at 2 and 3
( citing Ho, col. 1, 1. 56-col. 2, 1. 7).
The Examiner relies on Suzuki for its disclosure of polyether pol yo ls
obtained by ring-opening polymerization of an alkylene oxide in the
presence of a composite metal cyanide complex catalyst that "allow[ s] one
to control the reaction rate with a polyisocyanate." Id. at 2 and 4 (citing
Suzuki, Abstract, ,r 15). The Examiner also relies on Suzuki for its
disclosure that the polyols have 1-30 ppm of composite metal cyanide
complex catalyst and 0.5-100 ppm of phosphoric acid compound based on
the amount of polyether polyol, determining that these amounts are
equivalent to the claimed ranges. Id. at 3 (citing Suzuki, Abstract). As to
different phosphoric acid compounds, the Examiner relies on paragraphs 41-
59 and 79-80 of Suzuki. Id. at 3--4. As to claim 5, the Examiner further
relies on Suzuki for its disclosure of
embodiments where the polyether polyol is prepared via ring-
opening polymerization of an alkylene oxide in the presence of
the composite metal cyanide complex [Suzuki ,r,r 79-92] .. .
where the phosphoric acid compound is added without .. .
removing the composite [id. ,r,r 7, 12-14, 35] ... [and where]
the phosphoric acid compound is added to the polyether polyol
prior to reaction with an isocyanate [id. ,r,r 79-80].
Ans. 4.
The Examiner concludes that "[i]t would have been obvious to one of
ordinary skill in the art to utilize the polyols of Suzuki [ with their composite
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Application 13/394,208
metal cyanide complex catalyst and phosphoric acid compound] in the
foams of Ho because doing so would allow ... control of the reaction rate
with the polyisocyanates of Ho as taught by Suzuki ... [to] prevent
undesirable gelation of the foam." Id. at 2-3 and 4.
Appellants contend that "Ho ... teaches that the use of tin based
catalysts greatly increases the reaction rate between the polyether polyol and
the polyisocyanate, which in this invention is a negative" (Appeal Br. 3
(citing Ho, col. 3, 11. 46-63)) and that "Suzuki ... teaches that a preferred
urethane-forming catalyst is an organic tin compound" (id. ( citing Suzuki
,r 64)). Appellants argue that "[i]n combining these references, the
Examiner has relied on improper hindsight reasoning ... [ and that] [ t ]here is
no motivation from the references that would have led one of ordinary skill
in the art at the time of the claimed invention to combine these two
references." Id.
Appellants provide no cogent argument that squarely addresses the
rejection set forth by the Examiner, including the motivation set forth for
combining the teachings. While contending that "[t]here is no motivation
from the references ... , " Appellants do not contest that "Suzuki teaches that
by using the polyether polyol of that invention, the reaction rate with a
polyisocyanate can be controlled" (id.), which was effectively the reason set
forth by the Examiner for the relied on combination (Ans. 2--4). Further,
contrary to Appellants' position, the motivation need not be found in the
cited prior art itself. See, e.g., Perfect Web v. Info USA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) ("[T]he use of common sense [to support the
combination of references] does not require a 'specific hint or suggestion in
a particular reference,' only a reasoned explanation that avoids conclusory
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generalizations." (citing DyStar Textilfarben GmbH v. CH Patrick Co., 464
F.3d 1356, 1366 (Fed. Cir. 2006)).
Appellants' further arguments are grounded on the use of organic tin
compounds as the preferred urethane-forming catalysts in Suzuki. Appeal
Br. 3. As explained by the Examiner, however, the organic tin compounds:
( 1) differ from the relied on composite metal cyanide complex catalyst of
Suzuki used to form the polyether polyols reacted with polyisocyanate to
produce polyurethane (Ans. 7-8 (citing Suzuki ,r,r 17-26, 31, and 61---64));
and (2) are not required by Suzuki, as the use of a urethane-forming catalyst
is optional and there are alternative non-tin catalysts that may be used (id. at
8 (citing Suzuki 64, 66)). Further, as also noted by the Examiner, "minor
amounts of tin catalysts is permitted" by Ho. Id. at 8 (citing Ho, col. 3, 11.
59---68).
Having failed to establish any deficiency in the Examiner's rejection,
Appellants' contention of impermissible hindsight is unfounded. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness") (cited with approval in KSR Int'! Co. v. Teleflex., 550 U.S.
398,418 (2007)).
For the reasons above, we are unpersuaded of reversible error and,
thus, sustain the rejection of claims 1-8.
Sasaki in view of Ooms - Claims 1-3 and 6-8
The Examiner relies on Sasaki for its disclosure of methods of making
polyurethane foams, which comprise reacting polyether polyol (A) with a
polyisocyanate compound in the presence of a blowing agent. Ans. 5---6
(Sasaki, Abstract, ,r,r 35, 84--86, and 95-127 (Examples)); see also Sasaki,
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Abstract. The Examiner also relies on its teaching that "the polyether
polyol A is made via a double metal cyanide complex catalyst." Ans. 6
( citing Sasaki ,r 20).
The Examiner relies on Ooms for its disclosure of a double metal
cyanide catalyst comprising organic phosphates as complexing ligands for
production of polyether polyols. Id. ( citing Ooms, Abstract, col. 2, 11. 1---6).
The Examiner also relies on Ooms for its teaching that these catalysts
exhibit increased catalytic activity, allowing use in amounts low enough that
costly separation of catalyst from the polyether polyol product is no longer
needed prior to the use of the polyol product for the production of
polyurethane. Id. ( citing Ooms, col. 1, 11. 56---67). As to the recited
concentration of double metal cyanide compounds and organic phosphates,
the Examiner relies on Ooms' disclosed catalyst concentrations and the
weight percent of metal cyanide compounds and organic phosphates of the
catalyst. Id. ( citing col. 4, 1. 64---col. 5, 1. 9).
The Examiner concludes that one of ordinary skill in the art would
have found it obvious at the time of the invention to have produced the
polyether polyols used in Sasaki using the double metal cyanide catalyst of
Ooms and to use the polyether polyols obtained without removal of the
catalyst for the benefit of lowered cost, and determined that this meets the
claim limitations as to the amounts of metal derived from a composite metal
cyanide complex catalyst and of phosphoric acid compound. Id.
Appellants' argument, reproduced below in full, is that:
Sazaki [sic] teaches a process for preparing a flexible
polyurethane foam from two polyols and a monool where one
polyol is made from a DMC catalyst and the other polyol is
made from a KOH catalyst. There is no motivation to combine
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this reference with the teaching of Ooms, and even if the
references would have been combined, the teaching of these
references would not have led one to the subject matter claimed
in claim 1.
Appeal Br. 3.
On this record, we are not persuaded of reversible error. While
contending that there is no motivation to combine, Appellants fail to address
the motivation set forth by the Examiner. As to what the combination
provides, Appellants fail to address the Examiner's determination that
Ooms' catalyst meets the claim limitations as to the amounts of metal
derived from a composite metal cyanide complex catalyst and of phosphoric
acid compound. Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2001)
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art. Because Lovin did not provide such arguments,
the Board did not err in refusing to separately address claims 2-15, 17-24,
and 31-34.").
For the reasons above, we are unpersuaded of reversible error and,
thus, sustain the rejection of claims 1-3 and 6-8.
DECISION
The Examiner's rejections under 35 U.S.C. § 103(a) of claims 1-8 are
AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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