Ex Parte Adkins et al

Patent Trial and Appeal Board

May 17, 2017

13826911 (P.T.A.B. May. 17, 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.
13/826,911 03/14/2013 Rick Adkins BMS132011 /MD-07-072 9988
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
05/19/2017 EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
05/19/2017 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 RICK ADKINS, JIONG ENGLAND,
and DON WARDIUS
Appeal 2016-001665
Application 13/826,911
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and BRIAN D. RANGE
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a polymer polyol and a process for making it.
Claim 1 is illustrative:
1. A stable, low-viscosity polymer polyol comprising the
free-radical polymerization product of:
(a) a clear liquid base polyol component comprising a natural
oil base polyol having a mean hydroxyl functionality of 1.7 to
5.0, a number average molecular weight of about 350 to about
Appeal 2016-001665
Application 13/826,911
725 and an OH number of 190 to 500, and which comprises the
transesterification/alkoxylation product of
(i) at least one initiator comprising at least one
Zerewitinoff-active hydrogen atom;
(ii) a natural oil component or a mixture of natural oil
components; and
(iii) at least one alkaline oxide;
in the presence of:
(iv) at least one alkaline catalyst;
wherein said alkylene oxide is completely reacted;
(b) at least one ethylenically unsaturated monomer; and,
optionally,
(c) a preformed stabilizer:
in the presence of:
(d) a free-radical polymerization initiator;
and, optionally,
(e) a chain transfer agent.
The References
Lorenz US 2008/0114086 A1
Adkins US 2010/0160469 A1
Reaney US 2010/0305344 A1
The Rejections
May 15,2008
June 24, 2010
Dec. 2, 2010
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2, 4—10, and 12—18 over Adkins in view of Lorenz, and claims 3 and 11 over
Adkins in view of Lorenz and Reaney.
OPINION
We affirm the rejections.
The Appellants argue the claims in each rejection as a group and set
forth the same arguments with respect to both rejections (App. Br. 3—8). We
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therefore limit our discussion to one claim, i.e., claim 1. Claims 2—18 stand
or fall with that claim. See 37 C.F.R. § 41.3(c)(l)(iv) (2012).
Adkins discloses (Tffl 5—16)
polymer polyols comprising the free-radical polymerization
product of:
(1) a base polyol selected from the group consisting of:
(a) one or more natural oils which naturally contains
at least one hydroxyl group,
(b) one or more hydroxylated derivatives of one or
more natural oils,
(c) one or more polyols which comprise the
alkoxylation product of one or more natural oils which naturally
contain at least one hydroxyl group with one or more alkylene
oxides,
(d) one or more polyols which comprise the
alkoxylation product of one or more hydroxylated derivatives
of one or more natural oils with one or more alkylene oxides,
and
(e) mixtures thereof;
(2) at least one ethylenically unsaturated monomer, and,
optionally,
(3) a preformed stabilizer,
in the presence of
(4) at least one free-radical polymerization initiator, and,
optionally,
(5) one or more chain transfer agents.
The “hydroxylated derivatives of one or more natural oils [b] typically have
a functionality of greater than or equal to one, preferably greater than or
equal to two and more preferably greater than or equal to 2.5; and an OH
number of 10 to 400 and preferably 20 to 200” (143), and have a molecular
weight typically between 200 and 20,000 (id.). The one or more polyols
which comprise the alkoxylation product of one or more natural oils which
naturally contain at least one hydroxyl group with one or more alkylene
oxides (c) “typically have a functionality of greater than or equal to one,
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preferably greater than or equal to two and more preferably greater than or
equal to 2.5; and an OH number of 20 to 400 and preferably 30 to 200”
(148), and have a molecular weight typically between 200 and 20,000 {id.).
The polyols can contain a preformed stabilizer 58—59).
Lorenz discloses “a process for the preparation of a polyether-ester
polyol involving reacting one or more starter compounds having
Zerewitinoff-active hydrogen atoms with one or more alkylene oxides in the
presence of a basic catalyst and in the presence of one or more fatty acid
esters to produce a polyether-ester polyol” (120).
The Appellants assert that “there is no information in either the
Adkins et al reference or in the Lorenz et al reference which provides a
logical basis for the skilled artisan to reasonably conclude or expect that
substituting the polyether-ester polyols of the Lorenz et al reference for the
base polyols of the Adkins et al reference would form PMPOs which exhibit
relatively high solids contents, with very low viscosities and good
filterability” (App. Br. 4).
For a prima facie case of obviousness to be established, the applied
prior art need not recognize a particular advantage recognized by the
Appellants. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact
that appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious”). “As long
as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.” In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992). The Appellants do not provide a
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Application 13/826,911
substantive challenge to the Examiner’s reason for combining the references
(Ans. 2-3).
The Appellants assert that the examples in their Specification show
unexpected results (App. Br. 4—5; Reply Br. 2—4).
We have begun anew and determined that due to the following
deficiencies in the evidence relied upon by the Appellants, the totality of the
evidence and argument supports a conclusion of obviousness of the claimed
polyol. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).
First, the Appellants do not provide a side-by-side comparison of the
claimed invention with the closest prior art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984). The Appellants rely merely upon commonality of
viscosity and styrene/acrylonitrile ratio between the Appellants’ and Adkins’
examples (App. Br. 4). The Appellants do not compare the claimed polyol
side-by-side to any Adkins polyol.
Second, it is not enough for the Appellants to show that the results for
the Appellants’ invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). The Appellants provide no evidence that the
relied-upon experimental results would have been unexpected by one of
ordinary skill in the art. The Appellants merely provide attorney argument
to that effect (App. Br. 4—5), and such argument of counsel cannot take the
place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d
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1185, 1189 (CCPA 1978)\ In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellants’ claim 1 encompasses
natural oil base polyols, alkylene oxides, alkaline catalysts and ethylenically
unsaturated monomers generally in any relative amounts, but the Appellants’
evidence is based upon only two natural oil base polyols, one alkylene
oxide, one alkaline catalyst and one ethylenically unsaturated monomer
composition, in relative amounts within narrow ranges (Spec. 39-47). We
find in the evidence of record no reasonable basis for concluding that the
great number of materials encompassed by the Appellants’ claims would
behave as a class in the same manner as the particular materials tested. See
In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d 442,
445-46 (CCPA 1971). The Appellants assert that the references do not
encompass the recited upper and lower boundaries in the Appellants’ claims
(Reply Br. 3), but the Appellants provide no substantive argument that the
references would not have suggested components covering the recited
ranges. The Appellants assert that the two tested polyols “represent the class
or group which they are a member of’ (id.), but the Appellants provide no
supporting evidence.
Accordingly, we are not persuaded of reversible error in the
rejections.
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DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 2, 4—10, and 12—18
over Adkins in view of Lorenz, and claims 3 and 11 over Adkins in view of
Lorenz and Reaney are affirmed.
It is ordered that 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).
AFFIRMED
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