Ex Parte Arrowood et al

Patent Trial and Appeal Board

Sep 26, 2016

13142060 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/142,060 06/24/2011 Tina L. Arrowood
109 7590 09/28/2016
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
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.
67931-US-PCT 9337
EXAMINER
KEYS,ROSALYNDANN
ART UNIT PAPER NUMBER
1671
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TINA L. ARROWOOD, MARTY W. DEGROOT,
PAUL R. ELOWE, DERRICK W. FLICK, JASON C. MACDONALD,
PETER N. NICKIAS, and DANIELE. VERRAL
Appeal2015-003138
Application 13/142,060
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and JOHN G. NEW,
Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a chemical process of using a
tetradentate Schiff base metal catalyst. The Examiner rejected the claims as
obvious under 35 U.S.C. § 103(a). We have jurisdiction under
35 U.S.C. § 134. The obviousness rejection is affirmed.
STATEMENT OF CASE
Appellants appeal from the Examiner's final rejection of claims
1-20. The claims stand rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious in view ofFadakar (U.S. Publ. Pat. App. 2007/0149825
Al, publ. June 28, 2007) and Teles (U.S. Pat. No. 6,846,961 B2,
Appeal2015-003138
Application 13/142,060
patented Jan. 25, 2005) or Sasaki (EP 1 380 342 Al, publ. Jan. 14,
2004). Answer 3, 4.
Claim 1, the only independent claim on appeal, is reproduced
below:
1. A process comprising:
a) contacting an alkylene oxide with an alcohol in the
presence of a catalyst comprising a tetradentate Schiff base
metal complex in a reaction zone under reaction conditions to
produce a reaction product comprising a mixture of at least two
of monoalkoxylated alcohols, dialkoxylated alcohols,
trialkoxylated alcohols, heavy molecular weight alkoxylated
alcohols having not more than 10 equivalents of alkylene oxide;
and
b) contacting an alkoxylated alcohol produced in step a)
with alkylene oxide in the presence of a catalyst comprising a
tetradentate Schiff base metal complex in a reaction zone under
reaction conditions to produce a reaction product.
DISCUSSION
The process of claim 1 comprises two steps. In the first step, an
alkylene oxide is contacted with an alcohol in the presence of a tetradentate
Schiff base metal complex catalyst. The reaction produces a mixture of
alkoxylated alcohols. In the second step, the alkoxylated alcohol is
contacted with alkylene oxide in the presence of a tetradentate Schiff base
metal complex catalyst to produce a reaction product.
The Examiner found that Fadakar describes the process of claim 1, but
does not teach the claimed tetradentate Schiff base metal complex as the
alkoxylation catalyst. Answer 3. However, the Examiner found that
Fadakar teaches that any alkoxylation catalyst may be used in the process.
Id. The Examiner further found that Teles describes the claimed tetradentate
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Appeal2015-003138
Application 13/142,060
Schiff base metal complex as a catalyst for an alkoxylation reaction. Id.
The Examiner also found that Sasaki describes the claimed tetradentate
Schiff base metal complex for "ring opening reaction of an epoxide." Id. at
5. The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have used the Schiff
base catalyst of Teles or Sasaki in Fadakar's process because the former
publications describe the catalyst as useful for alkoxylation and Fadakar
teaches that any suitable alkoxylation catalyst may be used in its reaction.
Id. at 4, 5.
Appellants identify the deficiencies in each of the individual
publications. Br. 4--5. However, the Examiner acknowledged these
deficiencies and explained why it would have been obvious to the ordinary
skilled worker to have modified the process described in Fadakar with the
teachings in Teles and Sasaki. Appellants did not identify an error in the
Examiner's fact-based reason for combining the publications to have arrived
at the claimed process. "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Because the evidence of record supports the Examiner's rejection and
Appellants did not identify a reversible error, we affirm the rejection of
claim 1 as obvious. Claims 2-20 fall with claim 1 because separate reasons
for their patentability were not provided. 37 C.F.R. § 41.37(c)(iv).
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Appeal2015-003138
Application 13/142,060
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)(l )(iv).
AFFIRMED
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