Ex Parte Adkins et al

Patent Trial and Appeal Board

Feb 22, 2017

12317563 (P.T.A.B. Feb. 22, 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.
12/317,563 12/23/2008 Rick L. Adkins P09118/MD06-68 4778
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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 L. ADKINS, STANLEY L. HAGER, BRIAN L. NEAL,
JACK R. REESE, JIONG ENGLAND, and MICAH N. MOORE
Appeal 2015-006591
Application 12/317,563
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1, 3, 6—13, 15, and 18—25, 27, 29-32 under
pre-AIA 35 U.S.C. § 102(b) as anticipated by Hager (U.S. 2007/0282029
Al, published Dec. 6, 2007, now U.S. Patent 7,456,229 B2 issued Nov. 25
2008), and claims 2, 14, 26, and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Hager. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
1 The Real Party in Interest is stated to be Bayer MaterialScience
LLC (App. Br. 1).
Appeal 2015-006591
Application 12/317,563
We AFFIRM.
Claim 1 is representative of the claimed invention (emphasis added)2:
1. A polymer polyol comprising the free-radical polymerization
reaction product of:
(1) a base polyol selected from the group consisting of:
(c) one or more polyols which comprise the alkoxylation
product of one or more natural oils which naturally contains 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
(3) a preformed stabilizer,
in the presence of
(4) a free-radical polymerization initiator,
and, optionally,
(5) a chain transfer agent.
At the outset, we note that while the Examiner separately rejected
independent product claim 1 and method claim 13 and its dependent claims,
the grounds of the rejection, as well as Appellants’ arguments, are virtually
the same for both claims 1 and 13 (See Ans.; App. Br., generally).
Accordingly, claims 1 and 13 and all their dependent claims, including those
separately rejected, stand or fall together.
2 It is noted that subclauses (a) and (b) were removed from the Markush
listing in claim 1, clause (1) (as well as claim 13), leaving claim 1 clause (1)
with only subclauses (c), (d), and (e).
2
Appeal 2015-006591
Application 12/317,563
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner’s finding that the claimed subject matter of representative claim 1
(as well as its corresponding method claim 13) is anticipated within the
meaning of § 102 in view of the applied prior art of Hager. Accordingly, we
will sustain the Examiner’s rejections for essentially those reasons expressed
in the Answer, including the Examiner’s Response to Argument section, and
we add the following primarily for emphasis.
Appellants and the Examiner dispute whether Hager describes, within
the meaning of § 102, an alkoxylation product of one or more natural oils for
the base polyol as recited in each independent claim 1 and claim 13.
The Examiner’s position is that Hager describes an alkylene oxide
adduct of castor oil or soybean oil in light of paragraphs 51 and 52 of Hager
when read as a whole, since paragraph 51 states that “[b]y alkoxylation of
the starter, a suitable polyether polyol for the base polyol component can be
formed” (e.g., Ans. 11, 12). Appellants’ argument that Hager does not
explicitly state alkylene oxide adducts of castor oil in paragraph 52 (App.
Br. 5, 6; Reply Br. 2) is not persuasive of reversible error in the Examiner’s
anticipation rejection. Rather, a preponderance of the evidence supports the
Examiner’s position that one of ordinary skill in the art would have readily
recognized/inferred that alkoxylation products (e.g., alkylene oxide adducts)
of natural oils (e.g., soybean oil or castor oil as a starter) were specifically
included as being among the suitable base polyols described/listed by Hager
(Ans. 11, 12; Hager H 51, 52). In rePreda, 401 F.2d 825, 826 (CCPA
1968) (In determining whether a reference anticipates the subject matter
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Appeal 2015-006591
Application 12/317,563
recited in a claim, “it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”) Cf. In re Schaumann,
572 F.2d 312, 317 (CCPA 1978) (In order to anticipate, a reference must
identify something falling within the claimed subject matter with sufficient
specificity to constitute a description thereof within the purview of § 102.).
It is well established that specific examples of the claimed subject matter are
not necessary to establish anticipation. Rather, to anticipate, one skilled in
the art must be able to “at once envisage” the claimed subject matter in the
prior art disclosure. In re Petering, 301 F.2d 676, 681 (CCPA 1962).
Thus, a preponderance of the evidence supports the Examiner’s de
facto position that one of ordinary skill in the art would have at once
envisaged alkylene oxide adducts of natural oils, such as castor and soybean
oils, from Hager’s disclosure (Ans. generally).
Accordingly, we affirm the Examiner’s anticipation rejection. No
further substantive arguments were made regarding the § 103 rejections.
Thus, we also affirm the § 103 rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED
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