Ex Parte Howie et al

Board of Patent Appeals and Interferences

Apr 14, 2005

10058520 (B.P.A.I. Apr. 14, 2005)

1 Appellants define a “substantially constant reflux rate”
as a reflux rate with a variance of no “more than about 10%.”
See page 11, lines 14 and 15 of appellants’ specification.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN KEENEY HOWIE,
JARED JOHN SCHAEFER,
and JAMES EARL TROUT
____________
Appeal No. 2005-0899
Application No. 10/058,520
____________
ON BRIEF
____________
Before GARRIS, KRATZ and PAWLIKOWSKI, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-28, which are all of the claims pending in
this application.
Appellants’ invention relates to polyol fatty acid polyester
synthesis from polyol and fatty acid ester reactants wherein a
substantially constant reflux rate of the fatty acid ester is
maintained during the reaction.1 A further understanding of the
Appeal No. 2005-0899
Application No. 10/058,520
Page 2
invention can be derived from a reading of exemplary claims 1, 16
and 25, the only independent claims on appeal. Claims 1, 16 and
25 are reproduced below.
1. A process for the preparation of polyol fatty
acid polyester, comprising heating a mixture of polyol,
fatty acid ester, emulsifying agent and catalyst under
conditions sufficient to cause reaction of the polyol
and the fatty acid ester, wherein the fatty acid chains
of the fatty acid ester have from about 6 to about 14
total carbon atoms, wherein the emulsifying agent
comprises a fatty acid soap having fatty acid chains of
from about 16 to about 22 total atoms, and wherein the
mixture is heated at a pressure sufficient to maintain
a substantially constant reflux rate of the fatty acid
ester during the reaction of the polyol and the fatty
acid ester.
16. A process for the preparation of polyol fatty
acid polyesters, comprising heating a mixture of
polyol, fatty acid ester and catalyst wherein the fatty
acid chains of the fatty acid ester have from about 6
to about 14 carbon atoms and at least 50% the polyol’s
hydroxyl groups are esterified and wherein the mixture
is heated at a pressure sufficient to maintain a
substantially constant reflux rate of the fatty acid
ester during the reaction of the polyol and the fatty
acid ester.

25. A process for the preparation of higher polyol
fatty acid polyters, comprising heating a mixture of
polyol, fatty acid ester and catalyst to form a polyol
fatty acid polyester wherein the polyol fatty acid
polyster has a pour point of not greater than about
-15°C and wherein the mixture is heated at a pressure
sufficient to maintain a substantially constant reflux
rate of the fatty acid ester during the reaction of the
polyol and the fatty acid ester.
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Application No. 10/058,520
Page 3
2 A § 102(b) rejection over Kenneally (U.S. Patent No.
5,491,226) as referred to at page 2 of the final rejection was
not carried forward in the answer. Consequently, that rejection
is not before us.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Rizzi et al. (Rizzi) 3,963,699 Jun. 15, 1976
Volpenhein 4,517,360 May 14, 1985
Claims 1-28 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Rizzi. Claims 1-28 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Volpenhein.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by appellants and
the examiner concerning the issues before us on this appeal.
OPINION
Upon review of the record including the respective positions
advanced by appellants and the examiner with respect to the
rejections that remains before us2, we find ourselves in
agreement with appellants since the examiner has not carried the
burden of establishing a prima facie case of anticipation.
Accordingly, we will not sustain the examiner's stated rejections
on this record substantially for reasons set forth in appellants’
briefs.
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Application No. 10/058,520
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In particular, we emphasize that the examiner, in relying on
a theory of inherency, must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristics necessarily flow from the
teachings of the applied prior art. See In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
Inherency cannot be established based on probabilities or
possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). Here, the examiner simply has not provided
persuasive support for the allegedly inherent description of a
substantially constant reflux rate of the fatty acid ester in the
polyol fatty acid polyester preparation methods disclosed in
either Rizzi or Volpenhein.
In this regard, the examiner points to the abstract and
columns 2-5 of Rizzi, and columns 2-4 of Volpenhein for
disclosure of reactants and synthesis temperature ranges (110 to
180 degrees centigrade) and pressure conditions (0.1 to 760 mm of
mercury), which process parameters are asserted as more or less
overlapping with appellants’ claimed reactants and disclosed
temperature and pressure reaction parameters as set forth at page
11 of their specification. See pages 4 and 5 of the answer. The
examiner argues, in effect, that appellants’ claimed
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Application No. 10/058,520
Page 5
substantially constant reflux would be inherently obtained in
carrying out the described reaction synthesis of Rizzi or
Volpenhein based on the asserted overlap of reaction conditions.
However, as correctly pointed out by appellants (brief,
pages 4-6), the examiner has not reasonably established that a
substantially constant reflux, as appellants claim, would
necessarily occur in the processes disclosed by Rizzi or
Volpenhein based on an asserted overlap of some process
parameters. Manifestly, the asserted overlap of some process
parameters falls significantly short of establishing inherency.
The examiner has not alleged, much less established that the
applied references employ an essentially identical reaction
process to that employed by appellants so as to reasonably
establish, prima facie, that the claimed reflux necessarily
occurs. Compare, for example, the disclosure at page 11, lines
14-25 and the Example at pages 17 and 18 of appellants’
specification wherein a substantial decrease in pressure of 250
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Application No. 10/058,520
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to 65 mm of mercury is employed during reaction in one disclosed
embodiment to obtain a substantially constant reflux with the
disclosure and examples of Rizzi wherein no corresponding
disclosure of a substantial decrease in pressure during the
reaction is provided.
Because the examiner’s § 102(b) rejections are predicated on
an inherency theory which has not been satisfactorily developed
by the examiner, we shall not sustain the examiner’s rejections.
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Application No. 10/058,520
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CONCLUSION
The decision of the examiner to reject claims 1-28 under
35 U.S.C. § 102(b) as being anticipated by Rizzi and to
reject claims 1-28 under 35 U.S.C. § 102(b) as being anticipated
by Volpenhein is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
PFK/sld
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Application No. 10/058,520
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