11217779 (P.T.A.B. Jul. 18, 2013)

Ex Parte Matheson et al

Patent Trial and Appeal BoardJul 18, 2013

11217779 (P.T.A.B. Jul. 18, 2013)

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. 11/217,779 09/01/2005 Kenneth Lee Matheson Sasol U.S.-19 8818 39703 7590 07/18/2013 C. JAMES BUSHMAN 1001 West Loop South Suite 810 HOUSTON, TX 77027 EXAMINER MCDONOUGH, JAMES E ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 07/18/2013 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 KENNETH LEE MATHESON, MASIKANA MILLAN MDLELENI, TAD CURTIS HEBDON, and HERBERT OLIN PERKINS ____________ Appeal 2012-003401 Application 11/217,779 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, GRACE KARAFFA OBERMANN, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003401 Application 11/217,779 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 3-15, 21, and 22 under 35 U.S.C. §103(a) as unpatentable over Lin (US 5,627,121, issued May 6, 1997). We have jurisdiction under 35 U.S.C. § 6(b).2 We sustain the Examiner's rejection based on the findings of fact, conclusions of law, and rebuttals to arguments expressed in the Answer. The following comments are added for emphasis. Appellants do not dispute Lin discloses the use of a catalyst, corresponding to Catalyst B of appealed independent claim 21, and that Lin uses this catalyst along with propylene oxide to propoxylate compounds such as alcohols and other active hydrogen-containing compounds. (Br. 23.) However, Appellants contend Lin fails to disclose or suggest propoxylating the catalyst itself to obtain a markedly better catalyst as required by claim 21. (Id. at 14, 22.) The Examiner finds Lin’s method necessarily propoxylates at least a portion of Lin’s catalyst, i.e., “produce[s] a . . . Propoxylated Catalyst B” (appealed claim 21), because Lin’s method includes steps I and II as recited in claim 21. (See Ans.3 9-10.) Where the Examiner establishes a reasonable assertion of inherency and thereby evinces that a claimed process appears to be identical to a process disclosed by the prior art and/or that the products claimed by the applicant and disclosed in the prior art appear to be the same, the burden is properly shifted to the applicant to show that they are not. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); see also, In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977) (“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie 1 Final Office Action mailed Oct. 6, 2010. 2 Appeal Brief filed Jul. 1, 2011 (“Br.”). 3 Answer filed Oct. 4, 2011. Appeal 2012-003401 Application 11/217,779 3 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.”); In re Huai-Hung Kao, 639 F.3d 1057, 1070 (agreeing that “inherency is indeed a part of the obviousness inquiry”); cf. King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1275– 76 (Fed. Cir. 2010) (quoting In re Ackenbach, 45 F.2d 437, 439 (CCPA 1930) (“According to the ‘128 patent, the natural result of taking metaxalone with food is an increase in the bioavailability of the drug. The prior art discloses taking metaxalone with food, but not the natural result of this process. However, because the prior art methods in their ‘normal and usual operation . . . perform the function which [King] claims in [the ‘128 patent], then such [patent] will be considered, to have been anticipated by the [prior art].’”)); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious.”). Appellants have not met their burden to show that Lin’s method of using propylene oxide and a catalyst, corresponding to Catalyst B of appealed claim 21, to propoxylate compounds such as alcohols and other active hydrogen-containing compounds would not produce a Propoxylated Catalyst B as claimed. Accordingly, we are not convinced of error in the Examiner’s conclusion of obviousness as to appealed claims 3-15, 21, and 22. 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 Appeal 2012-003401 Application 11/217,779 4 tc