Ex Parte Lorenz

Board of Patent Appeals and Interferences

Apr 13, 2012

11602787 (B.P.A.I. Apr. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KLAUS LORENZ
__________

Appeal 2011-006366
Application 11/602,787
Technology Center 1600
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-8. We have jurisdiction under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
Claim 1, the only independent claim on appeal, is representative of the
claims on appeal, and reads as follows:
1. A process for the production of polyols based on natural oils comprising:
a) oxidizing unsaturated trigiycerldes with peroxycarboxylic acids or
hydrogen peroxide, catalyzed by carboxylic acids, at temperatures from
about 20°C to about 90°C to form epoxide groups, wherein the molar ratio
of hydrogen peroxide to the oxidizable double bond equivalents is from
about 0.2 to about 1.5 and the molar ratio of catalytically active carboxylic
acid to oxidizable double bond equivalents is from about 0.2 to about 1.1,
b) converting the epoxide groups formed in a) to alcohol groups in
situ at a temperature of from about 90 to about 130°C,
c) freeing products produced in a) and b) from volatile constituents in
vacuo at temperatures of from about 60 to about 130°C and
d) alkoxylating the products obtained in a) to c) with alkylene oxides
to form polyether polyols.

The following ground of rejection is before us for review:
Claims 1-81 stand rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Petrovic2 and Kurth.3 As Appellant does not
argue the claims separately, we focus our analysis on claim 1, and claims 2-8
stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
We affirm.

1 The rejection as set forth in the Examiner’s Answer refers to claims 1-7
(Ans. 3). We assume that is a typographical error, as the Appeal Brief (App.
Br. 2) states that claims 1-8 are subject to the appeal.
2 Petrovic et al., U.S. Patent No. 6,686,435 B1, issued Feb. 3, 2004.
3 Kurth et al., Pub. No. US 2003/0191274 A1, published Oct. 9, 2003.
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ANALYSIS
The Examiner relies on Petrovic for teaching all of the limitations of
claim 1except for the alkoxylation of step (d) of claim 1, as well as the
recited temperatures and concentrations (Ans. 4). The Examiner relies on
Kurth for teaching that alkylation of a polyol will further increase its
functionality (content of hydroxyl groups) (id.). The Examiner thus
concludes that it would have been obvious to modify the polyols produced
by Petrovic with an alkylene oxide as taught by Kurth because Kurth teaches
“that when using polyols to form polyurethanes, modifying the polyol with
an alkylene oxide allows the skilled artisan to control the toughness,
durability, and flexibility of the resultant polyurethane foam, and also will
increase the functionality of the resultant polyol” (id. at 4-5).
As to the temperatures and concentrations cited, the Examiner finds
that Petrovic “teaches the general conditions recited, but is silent as to the
particulars” (id. at 5). Citing In re Aller 220 F.2d 454, 456 (CCPA 1955),
the Examiner concludes that differences in concentration and temperature
will not support patentability unless Appellant demonstrates that the
temperature or concentration is critical.
We adopt the Examiner’s findings of fact and conclusions as our own.
Appellant asserts that Petrovic requires the presence of water as the
epoxidized oil is converted to the polyol, whereas step (c) of the claimed
process requires the removal of volatile materials such as water (App. 3).
Appellant also argues that Petrovic “does not teach or suggest alkoxylation
of the natural oil-based polyols described therein to produce polyether
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polyols,” whereas the “claimed process requires alkoxylation to produce
polyether polyols in step d)” (App. Br. 3).
Appellant’s arguments are not convincing. As to Appellant’s
argument that Petrovic does not teach or suggest alkoxylation of the natural
oil-based polyols described therein to produce polyether polyols, the
Examiner relies on Kurth to teach that step. As to Appellant’s argument that
Petrovic requires the presence of water as the epoxidized oil is converted to
the polyol, while that is true, after the polyol is produced, excess water and
alcohol is removed by vacuum distillation (see, e.g., Petrovic, col. 5,
Example 1, especially col. 6, ll. 4-7). While Petrovic does not teach the
temperature at which the vacuum distillation is performed, we agree with the
Examiner that it would have been well within the level of skill in the art to
determine the temperature required to remove the water and alcohol during
the vacuum distillation. See KSR Int’l Co. v. Teleflex Inc, 550 U.S. 398, 418
(2007) (noting that it is proper to “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”); see
also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). Thus, we agree with the Examiner (Ans. 4)
that Petrovic teaches step (c) of claim 1.
As to Kurth, Appellant argues that Kurth discloses vegetable oil based
polyols, wherein in the disclosed two-stage method, the reaction product of a
multifunctional alcohol and a multifunctional component is reacted with a
vegetable oil (App. Br. 3). Appellant notes that Kurth “teaches that the
functionality of this polyol may be further increased by oxylation . . . [and]
may be conducted directly on the vegetable oil, the ester precursor or the
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product of the second transesterification product” (id. at 4). Appellant
asserts, however, Kurth “does not teach or suggest a process in which the
oxidizable bonds of an unsaturated triglyceride are epoxidized,” as the
process of Kurth requires an ester precursor (id.). Appellant further asserts
that Petrovic “teaches that the transesterification formation is negligible in
the process disclosed therein . . . . [thus] the transesterification required by
Kurth [ ] was avoided in the Petrovic [ ] process” (id. (citing Petrovic, col. 5,
ll. 46-47)). Therefore, according to Appellant, the ordinary artisan would
not have combined the references as suggested by the Examiner (App. Br.
4).
Appellant also argues that Kurth teaches that the vegetable oil itself
may be oxylated, whereas the claimed process requires epoxidation of the
triglycerides prior to alkoxylation, and thus the claimed process does not
“come within the scope of this embodiment of the Kurth process (id.).
Appellant makes similar arguments as to oxylation of the ester precursor and
transesterified vegetable oil (id. at 4-5). Thus, Appellant argues, there is no
equivalence between the epoxidized vegetable oil of Petrovic and the
vegetable oil, esterified precursor, or transesterification product of Kurth (id.
at 5).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
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technique is obvious unless its actual application is beyond his
or her skill.

Id., at 417. In determining whether obviousness is established by combining
the teachings of the prior art, “the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure
is not limited only to its preferred embodiments, but is available for all that it
discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545
F.2d 747, 750 (CCPA 1976).
In this case, while Kurth teaches a different process for producing a
polyol, Kurth does teach that oxylation of polyols, such as propoxylation and
ethoxylation, is one way known in the art to increase the reactivity of
polyols, such as petroleum based polyols (Kurth, p. 1, ¶ 8). Thus, the
ordinary artisan would understand that the oxylation reaction disclosed by
Kurth could be used with other polyols, such as the polyols produced by
Petrovic, and is not confined to use with polyols produced by the method
disclosed by Kurth.
Appellant further argues that Petrovic does not teach or suggest a
molar ratio of from about 0.2 to 1.5 during formation of the epoxidized
triglyceride, and Kurth does not employ a peroxide (App. Br. 5). Appellant
makes similar arguments as to the catalytically active carboxylic acid (id. at
5-6).
Appellant asserts that the claimed process requires removal of volatile
constituents in vacuo at temperatures of from about 60 to about 130°C,
which is not suggested by Petrovic or Kurth (id. at 6). Appellant further
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asserts that Petrovic “specifically teaches that the epoxidized natural oil is
not treated to remove such volatile materials” (id.)
As discussed above, Petrovic does teach removal of excess water and
alcohol by vacuum distillation, and in the absence of evidence to the
contrary, we agree with the Examiner that it would have been well within
the level of skill of the ordinary artisan to determine the proper conditions to
perform that distillation, such as the temperature at which the distillation
should be run, as Petrovic provides the general reaction conditions.
In addition, while Kurth does not employ a peroxide or catalytically
carboxylic acid in the production of a polyol, Petrovic does teach the use of
such agents in its process of producing a polyol. We again agree with the
Examiner that, in the absence of evidence to the otherwise, it would have
been well within the skill of the ordinary artisan to determine the molar ratio
of hydrogen peroxide to the oxidizable double bond equivalents as Petrovic
discloses the general reaction conditions.

SUMMARY
The rejection of claims 1-8 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Petrovic and Kurth is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED

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