Ex Parte Beckers et al

Patent Trial and Appeal Board

Dec 18, 2012

10961271 (P.T.A.B. Dec. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/961,271 10/08/2004 Johannes Gerhardus Joseph Beckers TS1368 (US) 6720
23632 7590 12/18/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
12/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHANNES GERHARDUS JOSEPH BECKERS,
MICHIEL BAREND ELEVELD, and
GERARDUS WILHELMUS HENRICUS INGENBLEEK
____________

Appeal 2011-012108
Application 10/961,271
Technology Center 1700
____________

Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “the Appellants”)1 seek our review
under 35 U.S.C. § 134(a) of a final rejection of claims 1, 3-7, and 13. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm for the reasons given by
the Examiner.

1 The Appellants identify the real party in interest as “Shell Oil Company.”
Appeal Brief filed (“Br.”) at 2.
Appeal 2011-012108
Application 10/961,271

2
STATEMENT OF THE CASE
The Appellants describe and claim a process for preparing a
polyoxyalkylene polyether polyol catalyzed by a dimetal cyanide complex
catalyst. Specification (“Spec.”) 1, ll. 5-8; Br. 7-8 (Claims App’x).
Representative claim 1 is reproduced below (with the disputed limitation
shown in italics):
1. A process comprising:
contacting an initiator compound having from 2 to 6
active hydrogen atoms with a crude alkylene oxide in the
presence of a catalyst comprising a dimetal cyanide complex to
yield a polyalkoxylene polyether polyol, wherein the crude
alkylene oxide comprises on total composition from 95.00% by
weight to 99.90% by weight of one or more alkylene oxides
selected from the group consisting of ethylene oxide, propylene
oxide and butylene oxide.
Br. 7.
The Examiner rejected the claims as follows:
I. Claims 1, 3-7, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Le-Khac2 in view of Larson;3 and
II. Claims 1, 3-7, and 13 on the ground of obviousness-type double
patenting over claims 1-15 of U.S. Patent 7,300,993 B2 issued
to Eleveld on November 27, 2007 (“’993 Patent”) in view of
Larson.
Examiner’s Answer mailed May 9, 2011 (“Ans.”) 3-12.

2 U.S. Patent 5,470,813 issued November 28, 1995.
3 U.S. Patent 4,692,535 issued September 8, 1987.
Appeal 2011-012108
Application 10/961,271

3

DISCUSSION
In contesting the two rejections, the Appellants argue the claims
together. Br. 2-5. Therefore, in addressing each of the two rejections below,
we select claim 1 as representative and confine our discussion to this
selected claim. Claims 3-7 and 13 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
I.
With respect to Rejection I, the Appellants do not dispute the
Examiner’s position that a person of ordinary skill in the art would have had
a sufficient reason to combine the teachings of Le-Khac and Larson. Br. 2-
4; Ans. 3-4. Rather, the Appellants contend that Larson does not disclose
“using a crude propylene oxide,” and therefore “[t]he references . . . do not
alone or in combination teach or suggest all of the limitations of the claims.”
Id. at 4-5. Specifically, the Appellants argue that “it would not have been
obvious to use this crude propylene oxide . . . because [Larson] itself
teaches that the propylene oxide must be purified before it can be used to
make polyether polyols.” Id. at 3.
Thus, a dispositive issue for Rejection I is:
Did the Appellants show reversible error in the Examiner’s finding
that Larson describes the use of the claimed “crude . . . propylene oxide,” as
that term would have been understood by one skilled in the relevant art?
Appeal 2011-012108
Application 10/961,271

4
We find no error in the Examiner’s finding that Larson describes the
use of “crude . . . propylene oxide,” as that term would have been
understood by one skilled in the relevant art. Ans. 4, 7-9. Even assuming
that Larson would not have disclosed or suggested the use of crude
propylene oxide (purity of 95% or above) per se, the Examiner was correct
in finding that the Appellants’ recited “crude . . . propylene oxide” (purity of
95.00% to 99.90% by weight), as broadly defined in the Specification, reads
on Larson’s purified crude propylene oxide at a disclosed purity level of,
e.g., 99.9%. Spec. 8, l. 20 to 9, l.10; Larson col. 2, ll. 53-63.
Therefore, we uphold Rejection I.
II.
The Appellants argue that the double patenting rejection, which also
relies on Larson, should be reversed for reasons similar to those offered
against Rejection I. Br. 5. We find this argument unpersuasive for the same
reasons discussed above with respect to Larson.
Therefore, we uphold Rejection II.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 3-7,
and 13 as unpatentable over Le-Khac in view of Larson is affirmed.
The Examiner’s rejection on the ground of obviousness-type double
patenting of claims 1, 3-7, and 13 over claims 1-15 of U.S. Patent 7,300,993
B2 in view of Larson is affirmed.
Appeal 2011-012108
Application 10/961,271

5
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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