Ex Parte Combs

Board of Patent Appeals and Interferences

Jul 22, 2008

10703928 (B.P.A.I. Jul. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE COMBS
____________

Appeal 2008-2788
Application 10/703,928
Technology Center 1700
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Decided: July 22, 2008
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Before CHUNG K. PAK, THOMAS A. WALTZ, and ROMULO H.
DELMENDO, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 31, all of the claims pending
in the above-identified application. We have jurisdiction pursuant to 35
U.S.C. § 6.

We AFFIRM.
Appeal 2008-2788
Application 10/703,928

STATEMENT OF THE CASE
The subject matter on appeal is related to a double metal cyanide
(hereinafter "DMC") catalyst product. (Spec. 1). Further details of the
appealed subject matter are recited in representative claim 11, which is
reproduced below:
1. A double metal cyanide (DMC) catalyst comprising:

a non-hexanitrometallate containing double metal cyanide compound;
one or more unsaturated tertiary alcohols; and
about 0 to about 80 wt. %, based on the amount of catalyst, of a
functionalized polymer having a number average molecular weight
greater than about 200.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following reference:
Clement 6,429,342 B1 Aug. 6, 2002

The Examiner has rejected claims 1 through 31 under 35 U.S.C. §
102(b) as anticipated by the disclosure of Clement. Appellant appeals from
the Examiner’s decision rejecting the claims on appeal under 35 U.S.C. §
102(b).
ISSUE
The Examiner finds that Clement teaches the claimed catalyst
mixture. (Ans. 3-5). Appellant, on the other hand, contends that Clement
teaches in its examples 5-8 ethoxylating an MBE initiator in the presence of

1 Appellant bases his arguments for patentability solely on the limitations of
claim 1. Therefore, we select claim 1 as the representative claim consistent
with 37 C.F.R. § 41.37(c)(1)(vii).
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a DMC catalyst complex to produce a polyol, rather than a catalyst. (App.
Br. 6).
The issue is, therefore, has Appellant shown reversible error in the
Examiner’s finding that Clement teaches the catalyst recited in claim 1
within the meaning of 35 U.S.C. § 102(b)?

RELEVANT FINDINGS OF FACT (FF)

1. According to Appellant, the claimed DMC compound includes,
inter alia, zinc hexacyanocobaltate (III), zinc hexacyanoferrate
(III), nickel hexacyanoferrate (II), or cobalt hexacyanocobaltate
(III). (Spec. 5).
2. According to Appellant, the claimed unsaturated tertiary alcohol is
defined by the formula:

wherein
R1 represents a group containing from two to twenty
carbon atoms having at least one site of unsaturation, where an
unsaturated carbon atom is attached to the hydroxyl-bearing
carbon of (I). Atoms other than carbon and hydrogen may be
present. R1 may be an aromatic group.
R2 represents a group containing from two to twenty
carbon atoms having at least one site of unsaturation, where an
unsaturated carbon is attached to the hydroxyl-bearing carbon
of (I) or one to twenty carbon atoms free of any sites of
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Application 10/703,928

unsaturation attached to the hydroxyl-bearing carbon (I). Atoms
other than carbon and hydrogen may be present. R2 may be an
aromatic group.
R3 represents a group containing from two to twenty
carbon atoms having at least one site of unsaturation, where an
unsaturated carbon is attached to the hydroxyl-bearing carbon
of (I) or one to twenty carbon atoms free of any sites of
unsaturation attached to the hydroxyl-bearing carbon (I). Atoms
other than carbon and hydrogen may be present.

(Spec. 5-6).
3. Appellant states that the above unsaturated tertiary alcohol formula
includes, inter alia, 2-methyl-3-butene-2-ol (hereinafter "MBE").
(Spec. 6).
4. Clement exemplifies (col. 12, ll. 10-50, Examples 7 and 8)
homogenizing or pre mixing a zinc hexacyanocobaltate/ t-
butanol/450 MW poly (propylene oxide) triol catalyst complex
with an MBE prior to the start of polymerization.
5. Clement, at col. 3, ll. 18-27 and col. 4, ll. 10-12, also states:
The starting mixture of catalyst, initiator compound and
alkylene oxide is conveniently made by combining the
catalyst and initiator compound in a pressure reactor (or by
forming the catalyst in the initiator), and then pressurizing
the reactor with an initial quantity of the alkylene oxide used to
activate the catalyst. The induction period follows, as indicated
by a nearly constant or slowly decreasing pressure in the
reactor. The onset of rapid polymerization that follows the
induction period is evidenced by a drop in pressure as the initial
quantity of alkylene oxide is consumed.
…
…the activated initiator/catalyst mixture is continuously fed
into a continuous reactor… [Emphasis added.]

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6. Clement teaches (col. 5, ll. 15-51 and col. 12, ll. 10-50, Examples
7 and 8) its preferred initiator as having secondary or tertiary
hydroxyl groups, with MBE as its exemplified initiator.
7. Appellant does not argue the Examiner's finding that one of
ordinary skill in the art can readily envisage MBE as the initiator.
(Compare Ans. 3-4 with App. Br. 4-7 and Reply Br. 2-4).
8. Clement teaches (col. 2, ll. 45-67 and col. 12, ll. 10-50, Examples 7
and 8) that the catalyst employed is a metal cyanide catalyst, with
zinc hexacyanocobaltate corresponding to that included in the
claimed non-hexanitrometallate containing double metal cyanide
compound as its exemplified catalyst.
9. Clement teaches (col. 5, ll. 40-51 and col. 6, ll. 55-67) that MBE,
which functions as an initiator, can also function as a complexing
agent.

PRINCIPLES OF LAW
The initial inquiry into the propriety of the Examiner’s § 102(b)
rejection requires interpretation of the claims on appeal to determine their
scope. See, e.g., Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir.
1997); In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). During
prosecution of a patent application, “[t]he PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). When a claim
employs the transitional term “comprising,” it is interpreted as not
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precluding the presence of additional ingredients and/or steps which are not
recited. In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981) (“As long as one
of the [claimed] monomers in the reaction is propylene, any other monomer
may be present, because the term ‘comprise’ permits the inclusion of other
[unrecited] steps, elements, or materials.”).
Under 35 U.S.C. § 102(b), “[a] claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover,
as stated in In re Best, 562 F.2d 1252, 1256 (CCPA 1977):
[w]here…the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C. §
102, on ‘prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products. [Footnote
and citations omitted).

The argued limitations must appear in the claims on appeal. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982)(Appellant’s arguments must be
based on limitations appearing in the claims.). Moreover, no new arguments
are allowed unless they are presented in the opening Brief. Cf. Cross Med.
Prods., Inc. v. Medtronic Sofamore Danek, Inc., 424 F.3d 1293, 1321 n.3
(Fed. Cir. 2005).

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ANALYSES
The claimed subject matter is directed to a double metal cyanide
(DMC) catalyst comprising a mixture of a non-hexanitrometallate
containing double metal cyanide compound inclusive of zinc
hexacyanocobaltate catalyst and one or more unsaturated tertiary alcohols
inclusive of MBE. See claim 1. The claimed functionalized polymer need
not be present (claim 1 recites an amount of 0 wt %). Moreover, additional
ingredients, which are not recited in claim 1, can be present due to
Appellant's use of the transitional term "comprising" in claim 1 as long as
the resulting product is a DMC catalyst.
Clement, like Appellant, teaches mixing a DMC compound and an
initiator, such as MBE, in a pressure reactor prior to mixing the resulting
mixture with alkylene oxide. (FF 5-9). Clement also exemplifies
premixing, inter alia, a DMC compound with MBE prior to polymerization.
(FF 4). Consequently, we concur with the Examiner that Clement teaches a
premixture of a DMC compound and MBE corresponding to the catalyst
recited by claim 1 within the meaning of 35 U.S.C. § 102(b).
In reaching this determination, we note Appellant's argument that
"what [Clement’s] examples 5-8 all describe is ethoxylating an unsaturated
tertiary alcohol [e.g., MBE] initiator in the presence of a DMC catalyst
complex to produce a polyol, not as the Examiner appears to be arguing
above, to produce a catalyst." (App. Br. 5) (emphasis in original). 2 We also

2 Milgrom (US 3,278,457) referred to at pages 2 through 4 of the Reply
Brief was not entered into the record. In fact, Appellant's own Brief refers to
Parker as the only evidence relied upon to rebut any inference of anticipation
established by the Examiner. (App. Br. 15). Thus, we decline to consider
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note Appellant's reliance on Parker (McGraw-Hill Dictionary of Chemistry
(1997)), which defines a catalyst as a "substance that alters the velocity of a
chemical reaction and may be recovered essentially unaltered in form and
amount at the end of the reaction" and an initiator as "a substance or
molecule (other than a reactant) that initiates a chain reaction, as in
polymerization..." (Reply Br. 5 citing Parker pp. 70 and 198). We do not
find the argument and evidence persuasive. As indicated above, Clement
teaches the claimed mixture, i.e., a mixture of a DMC compound and MBE,
prior to polymerization. Appellant has not directed us to any showing that
the term "catalyst" in the preamble of claim 1 renders the claimed mixture
patentably different from the DMC compound and MBE mixture taught by
Clement.
Appellant argues for the first time in the Reply Brief that the order of
mixing the catalyst ingredients is critical in forming the claimed catalyst.
(Reply Br. 2-4). This new argument need not be considered since it was not
raised in the opening brief.
To the extent that we must consider this argument, we note that the
claims on appeal do not require any specific order of mixing. As such, this
argument is not relevant to the claims on appeal.
Moreover, we find that Clement, like Appellant, teaches mixing of the
DMC compound with the MBE initiator in a pressure reactor before they are
Milgrom. See 37 C.F.R. 41.33(d)(2)(stating "[a]ll other affidavits or other
evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1)
through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1),
41.50(a)(2)(i) and 41.50(b)(1)") and 37 C.F.R. 41.41(a)(2)(stating "[a] reply
brief shall not include any new or non-admitted amendment, or any new or
non-admitted affidavit or other evidence.")
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combined with other ingredients. On this record, Appellant has not shown
that the mixtures taught or exemplified by Clement corresponding to that
claimed would not necessarily result in the claimed catalyst.
Accordingly, based on the factual findings set forth above and in the
Answer, we concur with the Examiner that Clement, on this record, renders
the subject matter defined by claims 1-31 anticipated within the meaning of
35 U.S.C. § 102(b).

ORDER
The decision of the Examiner is affirmed.

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)(1)(iv).

AFFIRMED

tc

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