Ex Parte Hofacker

Patent Trial and Appeal Board

Nov 26, 2012

11214995 (P.T.A.B. Nov. 26, 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.
11/214,995 08/30/2005 Steffen Hofacker PO-8534/BMS041100 3739
23416 7590 11/27/2012
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
11/27/2012 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 STEFFEN HOFACKER
____________

Appeal 2011-012194
Application 11/214,995
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections of claims 1, 4, and 5 under 35 U.S.C. § 112, 1st paragraph, as
failing to comply with the written description requirement and under 35
U.S.C. § 103(a) as unpatentable over Hofacker (US 2003/0125576 A1,
published Jul. 3, 2003) in view of Kurian (US 6,350,895 B1, issued Feb. 26,
2002). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2011-012194
Application 11/214,995

2
Appellant claims a process for preparing an oligocarbonate polyol
having a methyl ether group content of less than 0.1 mol% which comprises
reacting dimethyl carbonate and an aliphatic polyol in the presence of a
catalyst comprising yttrium (III) acetylacetonate (claim 1).
Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. A process for preparing an oligocarbonate
polyol having a number-average molecular weight of 500 to
5000 g/mol and having a methyl ether group content of less
than 0.1 mol %, which comprises reacting dimethyl
carbonate and an aliphatic polyol in the presence of a catalyst
comprising an yttrium (III) acetylacetonate.

We will sustain each of the above rejections for the reasons expressed
in the Answer and below.

The § 112, 1st paragraph (written description), Rejection
"[T]he test for [written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). "[T]he purpose of the written description
requirement is to 'ensure that the scope of the right to exclude, as set forth in
the claims, does not overreach the scope of the inventor's contribution to the
field of art as described in the patent specification.'" Id. at 1353-54 (quoting
Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).
According to the Examiner, "[a]dequate support has not been
provided [for] the claimed ether group content for the full scope of the
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claims [because] . . . support only exists for a methyl ether content of less
than 0.1 mol % as it relates to the oligocarbonate diol produced by the
method and components (i.e.; polyol) of [Specification] Example 2" (Ans.
3).
It is Appellant's position that paragraphs 14-15 of the 1st Hofacker
Declaration and the publication EP 0343572 referred to therein evince that
various polyols will react similarly with a suitable catalyst (App. Br. 5).
Based on this evidence, Appellant argues that "[t]he scope of the inventive
processes should not be limited to hexanediol simply because it is the polyol
employed in the working example of the Specification" (id. at 6). Appellant
further argues that the rejection is even less substantiated with respect to
claim 5 which defines a more specific aliphatic polyol reactant (id.).
Appellant's argument and evidence lack convincing merit for a
number of reasons.
First, Appellant's evidence possesses limited probative value for the
proposition that various polyols will react similarly with a suitable catalyst.
As support for this proposition, the 1st Hofacker Declaration relies on an
unattached publication, namely, EP 0343572 (Decl. para. 15). However, the
Declaration fails to identify and discuss specific disclosures in this
publication but instead merely refers to "the examples" (id.) generally as
allegedly showing that, "in the presence of a suitable catalyst, various
polyols, both linear and branched, and mixtures thereof, react similarly to
produce the desired products" (id.). Due to this lack of specificity, the 1st
Hofacker Declaration and the reference therein to EP 0343572 are of limited
value in assessing whether the claimed methyl ether group content would be
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Application 11/214,995

4
obtained when using polyols other than the hexanediol of Specification
Example 2.
Second, Appellant's argument and evidence are directed solely to the
written description issue raised by the broad scope encompassed by the
claimed aliphatic polyol relative to the specific hexanediol disclosed in
Example 2. Appellant fails to address the written description issue raised by
the broad claim scope relative to other specifics of the Example 2 disclosure.
For example, the disclosure of Example 2 describes a method having not just
specific reactants but also specific pressures, temperatures, times, and
reactant/catalyst amounts, whereas the appealed claims are not limited to any
such method specifics. Therefore, the argument and evidence presented by
Appellant are also unpersuasive because they do not address the Examiner's
written description concerns regarding the breadth of the claimed method
relative to the specific method disclosed in Example 2.
For the reasons stated above and in the Answer, Appellant's original
Specification disclosure would not reasonably convey to those skilled in the
art that Appellant had possession on the application filing date of the subject
matter broadly defined by the appealed claims. It follows that the scope of
protection sought by Appellant's broad claims overreaches Appellant's scope
of contribution as described in the Specification.
We sustain the §112, 1st paragraph, rejection of claims 1, 4, and 5 as
failing to comply with the written description requirement.

The §103 Rejection
For the reasons detailed in the Answer, we agree with the Examiner
that it would have been prima facie obvious to modify the transesterification
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process of Hofacker by replacing Hofacker's yttrium-based catalyst (i.e.,
yttrium tris(2,2,6,6-tetramethyl-3,5-heptanedionate)) with yttrium
acetylacetonate as claimed in view of Kurian's teaching that yttrium
acetylacetonate as well as yttrium tris(2,2,6,6-tetramethyl-3,5-
heptanedionate) are known transesterification catalysts (Ans. 4-5).
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness because "there is no reasonable expectation of
success provided by either reference as to producing products having a
reduced methyl ether content as claimed" (App. Br. 8; emphasis deleted).
This argument is unpersuasive. It would have been prima facie
obvious to modify Hofacker's transesterification process as proposed by the
Examiner based on a reasonable expectation that the yttrium acetylacetonate
of Kurian would successfully catalyze the desired transesterification
reaction. The claimed methyl ether group content of less than 0.1 mol % is
merely another advantage flowing naturally from following the suggested
modification. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff’d.
mem., 795 F.2d 1017 (Fed. Cir. 1986) (holding that the recognition of
another advantage flowing naturally from following the suggestion of the
prior art cannot be the basis for patentability when the difference would
otherwise be obvious).
Appellant also argues that any prima facie case of obviousness has
been successfully rebutted by evidence of unexpected results (App. Br. 8).
In particular, Appellant relies on the 1st and 2nd Hofacker Declarations as
showing that the claimed yttrium acetylacetonate unexpectedly yielded an
ether content of less than 0.01 mol% when reacting dimethyl carbonate and
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Application 11/214,995

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1,6-hexanediol as compared to an ether content of 3.0 mol% obtained with
yttrium heptanedionate (id. at 8-10).
We agree with the Examiner that this declaration evidence is
inadequate to successfully rebut the prima facie case of obviousness because
it is not commensurate in scope with the appealed claims (Ans. 6-8). The
Examiner correctly explains that the appealed claims are not limited to the
particular reactants and process conditions of the comparison showing
presented in the Hofacker Declarations (id. at 7). As properly observed by
the Examiner, "[i]t is not seen that a trend supportive of [A]ppellant's
position can be reasonably established from what is essentially a single data
point" (id. at 8). Stated differently, it cannot be determined from Appellant's
evidentiary showing whether the broad scope of processes encompassed by
the appealed claims would yield an unexpectedly low methyl ether content.
For all we know based on this narrow showing, the inventive yttrium
acetylacetonate yielded a methyl ether content typical of yttrium-based
catalysts whereas the comparative yttrium heptanedionate yielded an
atypically large methyl ether content.
We sustain the §103 rejection of claims 1, 4, and 5 as unpatentable
over Hofacker in view of Kurian.

Conclusion
The decision of the Examiner 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).
AFFIRMED
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