Ex Parte Combs

Board of Patent Appeals and Interferences

Jul 23, 2009

11031733 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE COMBS
____________

Appeal 2009-000079
Application 11/031,733
Technology Center 1700
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Decided:1 July 23, 2009
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Before CHUNG K. PAK, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000079
Application 11/031,733

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 32 through 41, all of the pending claims
in the above-identified application. We have jurisdiction pursuant to 35
U.S.C. § 6.
We AFFIRM.
The subject matter on appeal is related to the claimed subject matter
drawn to a double metal cyanide (“DMC”) catalyst considered in the earlier
opinion entered July 22, 2008 by the previous merits panel on Appeal No.
2008-2788 (Application 10/703,928). The currently appealed subject matter
is directed to using such double metal cyanide (“DMC”) catalyst in an
admittedly known process for producing a polyol. See the preamble of
Jepson claim 32 on appeal.
Details of the appealed subject matter are recited in currently appealed
claim 32 reproduced below:
32. In a process for the production of a polyol by polyaddition of
alkylene oxides onto starter compounds containing active hydrogen atoms,
the improvement comprising conducting the polyaddition in the presence of
the 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 appealed subject matter, the
Examiner proffered the following prior art:
Clement US 6,429,342 Aug. 6, 2002
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Application 11/031,733

The Examiner rejected claims 32 through 41 under 35 U.S.C. § 102(b)
as anticipated by the disclosure of Clement.2
Appellant traverses the Examiner’s rejection, arguing that the
Examiner erred in finding that Clement teaches employing the claimed
double metal cyanide (DMC) catalyst comprising a non-hexanitrometallate
containing double metal cyanide compound (DMC compound) and one or
more unsaturated tertiary alcohols in a conventional polymerization process
for producing a polyol (App. Br. 4-9 and Reply Br. 3).

ISSUE and CONCLUSION
Has Appellant identified reversible error in the Examiner’s factual
finding that Clement teaches employing a premixture of a DMC compound
and MBE corresponding to the claimed catalyst in its polymerization process
for preparing a polyol within the meaning of 35 U.S.C. § 102(b)? On this
record, we answer this question in the negative.
FINDINGS OF FACT
1. According to Appellant, (Spec. 5, ll. 4-10):
Examples of [the claimed] double metal cyanide
compounds that can be used in the invention include, for
example, zinc hexacyanocobaltate (III), zinc hexacyanoferrate
(III), nickel hexacyanoferrate (II), cobalt hexacyanocobaltate
(III), and the like. Further examples of suitable double metal
cyanide complexes are listed in U.S. Pat. No. 5,158,922, the
teachings of which are incorporated herein by reference. Zinc
hexacyanocobaltate (III) is preferred.

2 To the extent that Appellant has presented substantive arguments for
separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii) (2005).

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Application 11/031,733

2. Appellant also states (Spec. 5-6) that:
The tertiary unsaturated alcohols useful in the present invention
may be designated by the formula (I)
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
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.
The structure of one such unsaturated tertiary alcohol, 2-
methyl-3-butene-2-ol (MBE) . . . .
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Appeal 2009-000079
Application 11/031,733

3. Appellant does not dispute the Examiner’s finding that Clement
teaches a process for preparing a polyol by polyaddition of alkylene oxides
onto starter compounds containing active hydrogen atoms. (Compare Ans. 3
with App. Br. 4-9).
4. Appellant does not dispute the Examiner’s finding that Clement
teaches that such conventional polymerization process is carried out in the
presence of a DMC compound defined as a catalyst and 2-methyl-3-butyn-2-
ol (MBE) defined as an initiator compound. (Compare Ans. 3 with App. Br.
4-9).
5. Clement teaches (col. 3, l. 18 to col. 4, l. 9, together with col. 2, 58-
60) (emphasis added) that:
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 [(the beginning of the
polymerization in which little or no polymerization occurs)]
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 polymerization reaction may be performed
continuously or batchwise. In such continuous processes, the
activated initiator/catalyst mixture is continuously fed into a
continuous reactor . . . .

6. Clement teaches that its preferred initiator compounds have
secondary or tertiary hydroxyl groups with MBE as its exemplified initiator
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Application 11/031,733

compound and can react with ethylene oxide (col. 4, ll. 56-61, col. 5, ll. 15-
51, and col. 12. ll. 10-50).
7. Consistent with the above disclosures, Clement exemplifies premixing
a zinc hexacyanocobaltate compound and 2-methyl-3-butene-2-ol (MBE)
homogeneously and activating the zinc hexacyanocobaltate compound/ 2-
methyl-3-butene-2-ol (MBE) mixture prior to the polymerization of alkylene
oxides (col. 11, l. 45 to col. 12, l. 50, Examples 5, 7 and 8).
8. Clement teaches that 2-methyl-3-butyn-2-ol (MBE) in Examples 5, 7,
and 8, which functions as an initiator, also functions as a complexing agent
(col. 5, ll. 40-51 and col. 6, ll. 55-67).

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
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
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Appeal 2009-000079
Application 11/031,733

may be present, because the term 'comprises' permits the inclusion of other
[unclaimed] 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 Cal., 814 F.2d 628, 631-32 (Fed. Cir. 1987). Moreover,
as stated in In re Best, 562 F.2d 1252, 1255 (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.).
A showing of unexpectedly superior results is not relevant to a
situation where a single prior art fully describes the claimed features under
35 U.S.C. § 102(b). In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974).

ANALYSES
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Application 11/031,733

The claimed subject matter is directed to employing a double metal
cyanide (DMC) catalyst comprising a non-hexanitrometallate containing a
double metal cyanide compound inclusive of a zinc hexacyanocobaltate
compound and one or more unsaturated tertiary alcohols inclusive of MBE
in a conventional polymerization process for preparing a polyol. (See claim
32.) The claimed functionalized polymer need not be present in the double
metal cyanide (DMC) catalyst. (See claim 32 reciting 0 wt% of the
functionalized polymer.). Moreover, additional ingredients and/or steps,
which are not specifically recited in claim 32, can be present due to
Appellant’s use of the transitional term “comprising” in claim 32.
Appellant does not dispute the Examiner’s finding that Clement
teaches the claimed conventional polymerization process for preparing a
polyol which is carried out in the presence of a DMC compound defined as a
catalyst and 2-methyl-3-butyn-2-ol (MBE) defined as an initiator compound.
Clement also teaches forming an activated mixture of a DMC compound and
an initiator, such as MBE, prior to using it in a polymerization process for
preparing a polyol. Clement also exemplifies premixing of a zinc
hexacyanocobaltate compound (DMC compound) with MBE prior to
polymerization. Consequently, we concur with the Examiner that Clement
teaches employing a premixture of a DMC compound and MBE
corresponding to the claimed catalyst in the claimed conventional
polymerization process for preparing a polyol within the meaning of 35
U.S.C. § 102(b).
Appellant contends that “the catalyst of Clement et al. is not the
catalyst of the instantly claimed polyol production process” (App. Br. 6,
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Application 11/031,733

together with Reply Br. 3). In support of this contention, Appellant refers to
pages 70 and 198 of McGraw-Hill Dictionary of Chemistry (Sybil P. Parker
et al. eds. 1997) containing the definitions of the terms “initiator” and
“catalyst” to distinguish the claimed catalyst from Clement’s premixture of a
DMC compound and an initiator (id). However, the fact remains that the
claimed catalyst, like Clement’s premixture, includes a mixture of a zinc
hexacyanocobaltate compound (DMC compound) and MBE. Appellant has
not shown that the claimed mixture is patentably different from Clement’s
premixture.
Appellant also contends that “the order of addition in making a double
metal cyanide catalyst is important because the catalyst maker is forming a
crystalline structure” (App. Br. 8). However, claim 32 does not recite any
specific order by which its catalyst is made or any structure by which the
claimed mixture can be patentably distinguished over Clement’s premixture.
Claim 32 only requires that the claimed catalyst, like Clement’s premixture,
contain a mixture of a DMC compound, such as a zinc hexacyanocobaltate
compound, and one or more unsaturated tertiary alcohols, such as MBE.
Further, Appellant contends that Clement teaches 2-methl-3-buyn-2-ol
(MBE) as one of a laundry list of possible complexing agents (App. Br. 9).
However, as indicated supra, Clement exemplifies forming a premixture of a
zinc hexacyanocobaltate compound and MBE prior to forming a polyol.
Appellant appears to contend that the Examiner’s 35 U.S.C. § 102(b)
rejection can be rebutted by a showing of unexpected results (App. Br. 9).
However, a showing of unexpectedly superior results is not relevant to a
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Application 11/031,733

situation where a single prior art fully describes the claimed features under
35 U.S.C. § 102(b).
It follows that Appellant has not shown that the Examiner erred in
finding that Clement teaches employing a premixture of a DMC compound
and MBE corresponding to the claimed catalyst in its polymerization process
for preparing a polyol 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).
AFFIRMED

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