Ex Parte Chauk

Board of Patent Appeals and Interferences

Feb 3, 2010

10909493 (B.P.A.I. Feb. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte SHRINIWAS S. CHAUK
______________

Appeal 2009-001156
Application 10/909,493
Technology Center 1700
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Decided: February 3, 2010
_______________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
ADRIENE LEPIANE HANLON, and CHARLES F. WARREN,
Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 3, 4, 6-15, 17, 18, and 20-29 in the
Office Action mailed July 13, 2007 (Office Action). The Examiner
subsequently refused to allow claims 1, 3, 4, 6-15, 17, 18, and 20-29 as
amended in the Amendment filed September 13, 2007, entered in the
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Advisory Action mailed October 10, 2007 (Advisory Action). 35 U.S.C.
§§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2007).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a stable, ultra-high solids
polymer polyol composition, and is representative of the claims on appeal:
1. A stable, ultra-high solids polymer polyol composition, comprising
the reaction product of:
(A) a base polyol;
(B) from 7.5% to 35% by weight, based on 100% by weight of the
polymer polyol, of a high potency preformed stabilizer which comprises
(1) a macromer or precursor which comprises an adduct of an
alcohol corresponding to the average formula:
A(OROX)≥ 1,
wherein
A represents a polyvalent organic moiety which has a free
valence ≥ 1,
R represents the divalent residue comprising an alkylene oxide
moiety,
and
X represents one or more of an organic moiety containing
reactive unsaturation which is copolymerizable with A and hydrogen and
one of such X is the organic moiety containing reactive unsaturation and the
remaining X’s are hydrogen;
(2) at least one free-radically polymerizable ethylenically
unsaturated monomer,
(3) a free-radical initiator,
and
(4) a liquid diluent comprising a monol;
and
(C) at least one ethylenically unsaturated monomer;
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in the presence of
(D) at least one free-radical polymerization initiator;
and
(E) a chain transfer agent;
wherein the polymer polyol has a solids content greater than 60% by weight,
and the polymer polyol has a kinematic viscosity less than or equal to
(X e[-4.5 x LN(1-(Y/100))]) wherein:
X: represents the kinematic viscosity of the base polyol,
Y: represents the total solids content expressed as weight percent,
LN: represents the logarithm to natural base,
and the polymer polyol has product stability such that essentially 100%
passes through a 150 mesh screen and at least about 99% passes through a
700 mesh screen.
The Examiner relies upon the evidence in this reference (Ans. 3-4):
Adkins (Adkins ‘613) US 2005/0085613 A1 Apr. 21, 2005
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1, 3, 4, 6-15, 17, 18,
and 20-29 over Adkins ‘613. App. Br.1 5; Ans. 4.2
Appellant acknowledges but does not request review of the grounds of
rejection under the judicially created doctrine of obviousness-type double
patenting advanced on appeal by the Examiner (App. Br. 5 and 11; Reply
Brief 2; Ans. 3):
claims 1, 3, 4, 6-15, 17, 18, and 20-29 as unpatentable over claims 24-45 of
United States Patent No. 7,160,975 to Adkins, granted January 9, 2007

1 We considered the Appeal Brief filed February 27, 2008.
2 The Examiner has withdrawn grounds of rejection under 35 U.S.C.
§ 102(e) over Adkins ‘613, and under 35 U.S.C. § 112, first and second
paragraphs. Ans. 2-3; Advisory Action 2; App. Br. 5; see Office Action
2-4.
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(Ans. 6);
claims 1, 3, 4, 6-15, 17, 18, and 20-29 as provisionally unpatentable over
claims 32-53 of Application 10/687,156 (Ans. 7);
claims 1, 3, 4, 6-15, 17, 18, and 20-29 as provisionally unpatentable over
claims 1-28 of Application 11/223,167 (Ans. 8);
claims 1, 3, 4, 6-15, 17, 18, and 20-29 as provisionally unpatentable over
claims 1-33 of Application 11/443,811, now United States Patent No.
7,456,229 to Hager, granted November 25, 2008 (Ans. 9).
Appellant argues the claims in the first ground of rejection as a group.
App. Br. 8-10. Appellant does not argue the grounds of rejection under the
judicially created doctrine of obviousness-type double patenting. App. Br.
11; Reply Br. 2. Thus, we decide the appeal based on claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
Opinion
Claim 1: 35 U.S.C. § 103(a)
We considered the totality of the record in light of Appellant’s
arguments with respect to claim 1 and the ground of rejection under
§ 103(a) advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence
or argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”) (citing, inter alia, In
re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
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The Examiner contends that Adkins ‘613 would have disclosed to one
of ordinary skill in this art polymer polyol compositions comprising the
reaction product of the components, including the preformed stabilizer, as
claimed in claim 1. Ans. 4-5, citing Adkins ‘613 ¶¶ 0025-174. With respect
to the preformed stabilizer, Appellant contends that Adkins ‘613 discloses a
chemically different macromer or precursor for this component than claimed
in claim 1. App. Br. 8:20-27 and 9:21-23. The Examiner responds that,
among other things, the “macromer/stabilizer structure” depicted in Adkins
‘613 ¶ 0034 has “the ethylenic group off the aromatic ring and the H group
off the –X-Y-(OH)m structure . . . [which] correspond to the ‘organic moiety
containing reactive unsaturation which is copolymerizable with A’ and
‘hydrogen’, respectively, identified in component ‘X’ of appellant’s claim
1.” Ans. 12; see also Ans. 12-13.
Appellant replies that “contrary to the Examiner’s position, there is no
organic moiety containing reactive unsaturation attached to the –X-Y-O-
portion of the structure in [Adkins ‘613],” and there is no disclosure in
Adkins ‘613 which suggests the changes in the macromer structure in
Adkins ‘613 ¶ 0034 leading to the macromer specified in appealed claim 1.
Reply Br. 4-5. Appellant argues that the claimed macromer or precursor
specified in claim 1 comprises an adduct of an alcohol of the structural
formula A(OROX)≥ 1 in which “‘X’ is always bonded to the second oxygen
in the (OROX)” and is “an organic moiety containing reactive unsaturation.”
Reply Br. 5. In this respect, Appellant points out that in the macromer
depicted structurally in Adkins ‘613 ¶ 0034, “the vinyl group (or
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ethylenically unsaturated group). . . is attached to the aromatic ring.” Reply
Br. 5-6.
On this record, the dispositive issue of whether the ethylenically
unsaturated macromer depicted in Adkins ‘613 ¶ 0034 falls within the
“macromer or precursor which comprises an adduct of an alcohol
corresponding to the average formula: A(OROX)≥ 1” as specified in claim 1,
entails interpreting the language used to specify the “macromer or
precursor” and particularly the definition of formula member “X” of the
“average formula A(OROX)≥ 1” by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage in context as they would be
understood by one of ordinary skill in the art in light of the written
description in the Specification. See, e.g., In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited therein; In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We determine the plain language “macromer or precursor which
comprises an adduct of an alcohol corresponding to the average formula:
A(OROX)≥ 1” in claim 1 specifies an “adduct” of “an alcohol” having that
“average formula.” In this respect, one of ordinary skill in this art would
have known that the preparation of an adduct having the average formula:
“A(OROX)≥ 1” from an alcohol having the average formula “A(OROH)≥ 1”
and another compound which contributes the “X” moiety, results in the “X”
moiety linked to the “polyvalent organic moiety” “A” through the “ORO”
linkage. Indeed, this result is specified by the claim language “one or more
of an organic moiety containing reactive unsaturation which is
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copolymerizable with A and hydrogen and one such X is the organic moiety
containing reactive unsaturation and the remaining X’s are hydrogen” used
to define “X.” In other words, this language requires that the “adduct”
“A(OROX)≥ 1” must contain at least one “OROX” substituent on “polyvalent
organic moiety” “A.” Our interpretation of this language comports with the
disclosure in the Specification as it would be understood by one of ordinary
skill in the art. Spec., e.g., 15:9-17 and 16:7-12; see App. Br. 3.
We find that the ethylenically unsaturated macromer depicted in
Adkins ‘613 ¶ 0034 has the structure described by Appellant. Indeed, in the
depicted ethylenically unsaturated macromer, the polyvalent phenylene ring
contains an ethylenically unsaturated substituent “A'–=–A” and a substituent
having at least the members “X-Y-OH.” Thus, as Appellant points out, and
contrary to the Examiner’s position, the “X-Y-OH” substituent of Adkins’
macromer does not correspond to the “OROX” substituent in claim 1
because, as we determined, claim 1 requires that at least one “X” must be
“an organic moiety containing reactive unsaturation” and not “hydrogen.”
See above pp. 6-7.
Indeed, the ethylenically unsaturated macromer depicted in Adkins
‘613 ¶ 0034 is an alcohol in view of the “X-Y-OH” substituent on the
polyvalent phenylene ring, and thus, can be used as a starting material to
form a macromer or precursor comprising an adduct by reaction with a
compound providing an “organic moiety containing reactive unsaturation”
satisfying the definition of “X” as claimed in claim 1. As Appellant further
points out, the Examiner has not provided on the record any suggestion or
motivation leading one of ordinary skill in this art to modify the
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ethylenically unsaturated macromer depicted in Adkins ‘613 ¶ 0034 to arrive
at “a macromer or precursor which comprises an adduct of an alcohol
corresponding to the average formula: A(OROX)≥ 1” as specified in claim 1.
See generally Ans.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 1, 3, 4, 6-15, 17, 18, and 20-29
under 35 U.S.C. § 103(a) over Adkins.
Claim 1: Judicially Created Doctrine of
Obviousness-Type Double Patenting
Appellant does not address the rejection of claims 1, 3, 4, 6-15, 17, 18,
and 20-29 under the judicially created doctrine of obviousness-type double
patenting advanced on appeal by the Examiner. See above pp. 3-4. In
particular, in the Appeal Brief, Appellant does not contest these grounds of
rejection but rather indicates that “[o]nce Appellant is advised of allowable
subject matter, they will proceed with filing the necessary terminal
disclaimers to overcome these rejections.” App. Br. 11.
Accordingly, we summarily affirm the obviousness-type double
patenting rejections. See Manual of Patent Examining Procedure § 1205.02
(8th ed., Rev. 3, August 2005) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, that ground of rejection
will be summarily sustained by the Board.”); see also In re Berger, 279 F.3d
975, 984 (Fed. Cir. 2002) (in which the Board affirmed an uncontested
rejection of claims under 35 U.S.C. 112, second paragraph, and on appeal
the Federal Circuit affirmed the Board’s decision and found that the
appellant had waived his right to contest the indefiniteness rejection by not
presenting arguments as to error in the rejection on appeal to the Board).
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Summary
We have affirmed the grounds of rejection of appealed claims 1, 3, 4,
6-15, 17, 18, and 20-29 under the judicially created doctrine of obviousness-
type double patenting, and reversed the ground of rejection of the appealed
claims under 35 U.S.C. § 103(a).
The Primary 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)(1)(iv).

AFFIRMED

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