Ex Parte Hsiao et al

Patent Trial and Appeal Board

Sep 27, 2017

13627127 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
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.
13/627,127 09/26/2012 Yu-Ling Hsiao PO-8500D / MD70/03-61D 1022
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
09/29/2017 EXAMINER
COONEY, JOHN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YU-LING HSIAO, RICHARD G. SKORPENSKE,
BRYAN D. KAUSHIVA, KENNETH G. McDANIEL,
JOSE F. PAZOS, STANLEY L. HAGER,
and KARL W. HAIDER
Appeal 2017-001933
Application 13/627,127
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
October 16, 2015 decision finally rejecting claims 53 and 56—59 (“Final Act.”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Covestro LLC, formerly
known as Bayer MaterialScience LLC (Appeal Br. 1).
Appeal 2017-001933
Application 13/627,127
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a continuous process for the
preparation of an alkoxylated soybean oil hydroxylate (Abstract; Spec. 6).
Details of the claimed invention are set forth in representative claim 53, which is
reproduced below from the Claims Appendix of the Appeal Brief:
53. A continuous process for the preparation of an alkoxylated
vegetable oil hydroxylate comprising:
a) establishing in a continuous stirred reactor a first portion of
a mixture of a double metal cyanide catalyst and
hydroxylated soybean oil to initiate polyoxyalkylation of
the hydroxylated soybean oil after introduction of
alkylene oxide into the continuous reactor;
b) continuously introducing into the continuous reactor one or
more alkylene oxides;
c) continuously introducing into the continuous reactor
hydroxylated soybean oil;
d) maintaining an effective concentration of (i) double metal
cyanide catalyst or (ii) alkylene oxide and hydroxylated
soybean oil, continuously during the process;
e) polyoxyalkylating the hydroxylated soybean oil by
continuously repeating at least steps a) through d) to
produce an alkoxylated soybean oil hydroxylate; and
f) continuously removing the alkoxylated soybean oil
hydroxylate from the continuous reactor.
DISCUSSION
Each of the claims on appeal — claims 53 and 56—59 — is rejected under
35 U.S.C. § 103(a) as being unpatentable over Pazos2 in view of Bauer.3
2 Pazos et al., US 5,689,012, issued November 18, 1997.
3 Bauer et al., DE 102 40 186 Al, published March 11, 2004. Because
Bauer is published in German, we refer, as do the Examiner and Appellants,
to the published US counterpart: US 2006/0167125 Al, published July 27,
2006.
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Application 13/627,127
Appellants state that all of the claims stand or fall together (Appeal Br. 2).
Accordingly, we focus our discussion on the obviousness rejection of claim
53 over Pazos in view of Bauer.
The Examiner finds that Pazos discloses each step of the claimed
method, except that Pazos does not specifically disclose the use of vegetable
oil hydroxylates in its process (Final Act. 2—3). The Examiner further finds
that Bauer discloses that vegetable oil hydroxylates, including soybean oil
hydroxylates, are known to be used as initiator materials in forming
alkoxylated polyols because of their acceptable reactant effects and
ecological benefits (Final Act. 3, citing Bauer || 3-37). Therefore,
according to the Examiner, it would have been obvious to have prepared the
polyols of Pazos using the initiator materials of Bauer for the purpose of
obtaining acceptably formed and ecologically beneficial reactant materials
(Final Act. 3—4).
Appellants argue that the Examiner has not made out a prima facie
case of obviousness, because a of person of skill in the art reading Pazos
would not reasonably expect or conclude that hydroxylated soybean oil
would be a suitable starter for activating a DMC (double metal cyanide)
catalyst, or that a hydroxylated soybean oil would be capable or suitable to
maintain the activity of the DMC catalyst once it has been activated (Appeal
Br. 3). Appellants further argue that Bauer fails to cure this alleged
deficiency, and that a person of skill in art would have had no reason to
believe that the DMC catalyst of Pazos would not be deactivated by
hydroxylated soybean oil (Appeal Br. 4). Appellants rely on the Declaration
of Dr. Karl Haider, filed September 29, 2015 (“Haider Deck”) in support of
their position.
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Application 13/627,127
According to Appellants, air oxidized soybean oil could not be
successfully alkoxylated in the presence of a DMC catalyst using Bauer’s
general procedure (Appeal Br. 4, citing Haider Decl., generally). The
Haider Declaration describes three experiments run according to Bauer’s
general procedure (Haider Decl. 5—7). In two of the experiments, air
oxidized soybean oil was used as the initiator {id. H 5, 6), while in the third
experiment, castor oil was used instead of oxidized soybean oil {id. 17).
According the Declaration, in the experiments using soybean oil, the catalyst
was not activated, while in the one using castor oil, the catalyst was
activated {id. 19).
Therefore, according to Appellants, a person of skill in the art would
not have had a reasonable expectation that using hydroxylated soybean oil in
the process of Pazos would have been successful, and the proposed
combination would not have been obvious (Appeal Br. 5—6).
We have reviewed the arguments and evidence that Appellants proffer
in the Appeal Brief, the Reply Brief, and the Haider Declaration. We
determine that Appellants have not demonstrated reversible error in the
Examiner’s findings or rejections, essentially for the reasons set forth in the
Final Action and the Answer. We add the following for emphasis.
Appellants do not dispute the propriety of the Examiner’s reason why
a person of skill in the art would have used the soybean oil disclosed in
Bauer in the process of Pazos. Instead, Appellants are essentially arguing
that because Bauer’s process is ineffective when oxidized soybean oil is
used as an initiator and more effective when castor oil is used as an initiator
(as the Haider Declaration shows), a person of skill in the art would not have
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Application 13/627,127
reasonably expected soybean oil to be useful in Pazos’s process. This
argument is not persuasive.
Absolute predictability that a proposed combination will be successful
is not required. As implicitly conceded by Appellants, all that is required is
a reasonable expectation of success. See In re O'Farrell, 853 F.2d 894, 903-
904 (Fed. Cir. 1988). In this instance, Bauer teaches that compounds
derived from renewable raw materials can be reacted with alkylene oxides
“in a customary and known way” (Bauer | 5). Bauer further teaches that
examples of compounds derived from renewable raw materials are, inter alia
castor oil, grapeseed oil, rapeseed oil, soybean oil, and others (Bauer |4).
Thus, a person of ordinary skill in the art reviewing Bauer would have had a
reasonable expectation that soybean oil would react with alkylene oxides in
a similar fashion to other compounds derived from renewable raw materials,
such as castor oil, “in [] customary and known way[s].”
As noted above, a prima facie case of obviousness only requires that a
person of skill in the art have a reasonable expectation of success in
combining and/or modifying the prior art. In view of Bauer’s disclosure that
soybean oil could be reacted in “a customary and known way” with alkylene
oxides, a person of skill in the art would have had a reasonable expectation
that combining Pazos and Bauer in the way contemplated by the rejection
would be successful. Such a person would not reasonably have been
expected to test each compound listed in Bauer’s 1 5 to determine how
effectively it could be used in Bauer’s process. Instead, reliance on the
stated teachings of Bauer would have been reasonable.
Contrary to Appellants’ argument (Appeal Br. 4), the combination of
the teachings of Pazos and Bauer together would have led one of ordinary
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skill in the art to reasonably expect that using soybean oil in Pazos’s process
would have been successful.
Moreover, as explained by the Examiner (Ans. 7), the selection of a
particular air oxidized soybean oil and DMC catalyst to produce suboptimal
results as illustrated in the Haider Declaration is not sufficient to overcome
the suggestion in the art that the proposed combination would have been
expected to be successful.
To the extent that Appellants argue that Pazos does not teach or
suggest the use of soybean oil in its process (Appeal Br. 3), such an
argument is unpersuasive because the rejection is not over Pazos alone, but
instead, is over Pazos in view of Bauer. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
CONCFUSION
Accordingly, we affirm the rejection of claims 53 and 56—59 under
35 U.S.C. § 103(a) as unpatentable over Pazos in view of Bauer.
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).
AFFIRMED
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