Ex Parte McDaniel

Patent Trial and Appeal Board

Mar 10, 2014

11893452 (P.T.A.B. Mar. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KENNETH G. McDANIEL1
__________

Appeal 2014-001451
Application 11/893,452
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making a polyether polyol, which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the Real Party in Interest as Bayer MaterialScience
LLC (App. Br. 1).
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STATEMENT OF THE CASE
Claims 7-9, 11-13, 18, and 19 are on appeal. Claim 7 is illustrative
and reads as follows:
7. A modified semibatch process for producing a polyether polyol
comprising polymerizing an epoxide in the presence of:
(a) a catalyst selected from the group consisting of modified oxides
and hydroxides of calcium, strontium and barium, lanthanum
phosphates or lanthanide series (rare earth) phosphates and
hydrotalcites and synthetic hydrotalcites;
(b) a continuously added starter (Sc) having a molecular weight of
less than about 300 Da; and
(c) an initially charged starter (Si);
wherein the Sc comprises at least about 2 eq. % of the total starter used; and
wherein the epoxide and the Sc are continuously added to the reactor during
the polymerization.

DISCUSSION
Issue
The Examiner has rejected claims 7-9, 11-13, 18, and 19 under 35
U.S.C. § 103(a) as obvious based on Pazos,2 Edwards,3 and Behler4 (Ans. 2).
The Examiner finds that Pazos discloses a process that meets the limitations
of claim 7 except that Pazos uses a double metal cyanide (DMC) catalyst
rather than one of the catalysts recited in claim 7 (Office Action mailed Aug.
10, 2012, pages 4-5). The Examiner finds that Edwards “teaches the use of
phosphate salt compounds of the rare earth elements” and Behler teaches
optionally modified hydrotalcites (id. at 5-6), and concludes that it would

2 Pazos et al., US 5,689,012, Nov. 18, 1997.
3 Edwards, US 5,057,627, Oct. 15, 1991.
4 Behler et al., US 6,646,145 B1, Nov. 11, 2003.
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have been obvious to “utilize the catalysts of Edwards or Behler in the
process of Pazos et al., since the catalysts of Edwards and Behler et al. are
taught to produce alkoxylate products that have narrow alkylene oxide
adduct distributions” (id. at 6).
Appellant contends that the process disclosed by Pazos requires a
differential catalyst, and a skilled artisan would not have known whether the
catalysts disclosed by Edwards and Behler meet Pazos’ definition of a
differential catalyst (App. Br. 4-6).
The issue presented is whether the evidence of record would have led
a person of ordinary skill in the art to reasonably expect that the catalyst
disclosed by either Edwards or Behler would act as a differential catalyst in
the process disclosed by Pazos.
Findings of Fact
1. The Examiner finds that Pazos discloses a process that meets the
limitations of claim 7 except that Pazos’ process does not use one of the
catalysts recited in part (a) of the claim (Office Action mailed Aug. 10,
2012, pages 4-5). Appellant does not dispute this finding (see Reply Br. 2:
“The present invention, like the Pazos et al reference, requires a
continuously added starter and an initially charged starter”).
2. Pazos discloses that catalysts useful in its process “are catalysts
exhibiting differential catalytic activity, preferably the double metal cyanide
complex catalysts” (Pazos, col. 6, ll. 12-14).
3. Pazos discloses that “differential catalytic activity” means “a
catalyst which exhibits a significantly higher instantaneous rate of alkylene
oxide addition polymerization with respect to low molecular weight starter
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molecules or polyoxylalkylated oligomeric starter molecules than with high
molecular weight polyoxyalkylene monols and polyols” (id. at col. 6, ll. 21-
26).
4. Pazos discloses that double metal cyanide complex (DMC)
catalysts are differential catalysts but “[s]imple basic catalysts such as
sodium and potassium hydroxides and alkoxides are not” (id. at col. 6, ll. 26-
29).
5. Pazos discloses a method to determine whether a given catalyst is a
differential catalyst:
[T]he differential catalytic activity may be examined by a
simple batch procedure for preparing a moderate to high
molecular weight polyoxypropylene polyol. If a polyol of the
target molecular weight is utilized in admixture with catalyst in
an amount of c.a. 10-35 mol percent of the total moles of
product while a low molecular weight, essentially monomeric
starter molecule is used to synthesize the remainder of the
product, and the polydispersity of the product is less than about
1.5, then the catalyst is a “differential catalyst.”
(Id. at col. 6, ll. 31-42.)
6. Pazos discloses that polydispersity is the weight average molecular
weight divided by the number average molecular weight for the polymers in
a product batch (id. at col. 6, ll. 54-59; col. 2, 1. 17).
7. The Specification equates polydispersity with molecular weight
distribution (see Spec. 1: 22: “polydispersity (molecular weight
distribution)”).
8. Edwards discloses “an alkoxylation reaction catalyzed by the
phosphate salts of one or more of the rare earth elements” (Edwards, col. 1,
ll. 48-50).
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9. Edwards discloses that “an alkoxylation reaction catalyzed by a
rare earth phosphate provides an alkoxylate product, particularly an alkanol
ethoxylate product, of exceptionally narrow-range alkylene oxide adduct
distribution” (id. at col. 4, ll. 27-31).
10. Edwards discloses that, “[i]n one preferred embodiment, the
catalyst comprises one or more of the phosphate salts of the lanthanum
series elements. In another embodiment, the catalyst comprises one or more
of the phosphate salts of the lanthanide elements.” (Id. at col. 4, ll. 58-62.)
11. Edwards discloses that “the use of basic catalysts, particularly the
metals sodium and potassium and their oxides and hydroxides, yields only a
relatively broad distribution range product” (id. at col. 2, ll. 43-46).
12. Edwards discloses that “[a]part from the use of [rare earth
phosphate salt] catalysts, the process of the invention is, as a general rule,
suitably conducted using such reactants and practicing under such
processing procedures and reaction conditions as are well known in the art
for alkoxylation reactions” (id. at col. 5, ll. 14-19).
13. Edwards discloses that “[w]hile these procedures describe a batch
mode of operation, the invention is equally applicable to a continuous
process” (id. at col. 9, ll. 45-47).
Analysis
Pazos discloses the process of claim 7, except that Pazos’ process uses
a DMC catalyst, rather than one of the catalysts recited in part (a) of claim 7
(FF 1). Edwards discloses an alkoxylation reaction catalyzed by phosphate
salts of lanthanum series elements or lanthanide elements (FFs 8, 10).
Edwards discloses that its reaction is carried out using the usual processing
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procedures and reaction conditions (FF 12) but, in contrast to reactions using
conventional basic catalysts (FF 11), its reaction provides products with an
exceptionally narrow range of sizes (FF 9). We agree with the Examiner
that it would have been obvious to a person of ordinary skill in the art to use
the catalysts disclosed by Edwards in Pazos’ process because Pazos
discloses that catalysts suitable for use in its reaction are those that produce
products with a low polydispersity (FF 5) – in other words, products with a
narrow size (molecular weight) distribution (FFs 6, 7) – and Edwards
discloses that its catalysts produce products with an exceptionally narrow
range of sizes (FF 9).5
Appellant argues that Pazos discloses the use of DMC catalysts, as a
type of differential catalyst, and that Pazos provides a specific definition for
differential catalytic activity and a method for determining whether a
catalyst is a differential catalyst (App. Br. 4). Appellant argues that Edwards
does not mention differential catalysts and provides no information
regarding the polydispersities of its products (id. at 4-5). Appellant argues
that “it is impossible for one skilled in the art to reasonably conclude that the
catalysts described [in] the Edwards reference are ‘differential catalysts’ as
described in the Pazos et al reference” (id. at 5).
This argument is not persuasive. As Appellant points out, Pazos
describes catalysts suitable for use in its method based on the polydispersity
of the resulting products, while Edwards does not disclose the polydispersity
of products resulting from use of its lanthanum phosphate or lanthanide

5 We do not find Behler to be necessary to establish a prima facie case of
obviousness for claim 7 and therefore will not discuss it further.
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phosphate catalysts. However, polydispersity is a measure of the range of
molecular weights of the products of a polymerization reaction (FFs 6, 7).
Thus, a skilled artisan would recognize that characterizing the products of a
reaction as having a low polydispersity is equivalent to characterizing it as
having a narrow range of molecular weights.
Both Pazos and Edwards contrast the narrow size range (low
polydispersity) of the products of their respective reactions with the broad
size range that results from using conventional basic catalysts (FF 9, 11;
Pazos, col. 2, ll. 43-46, col. 4, l. 66 to col. 5, l. 2). In addition, Edwards
describes the products of reactions catalyzed with its catalysts as having an
“exceptionally narrow-range alkylene oxide adduct distribution” (FF 9).
The evidence therefore supports the Examiner’s conclusion that a skilled
artisan would have reasonably expected Edwards’ catalysts to be suitable for
use in Pazos’ process, in place of the DMC catalyst disclosed by Pazos.
Appellant also argues that Edwards “only requires one type of starter.
By comparison, the present invention and the Pazos et al reference both
require two different starters, (i.e. an initial starter and a continuously added
starter) to react with the epoxide to provide the narrow molecular weight
distribution.” (App. Br. 5.)
This argument is also unpersuasive. As Appellant notes, the process
disclosed by Pazos uses both an initial starter and a continuously added
starter. See Pazos, col. 5, ll. 55-60 (“[A] DMC catalyst/starter mixture is
introduced. . . . [L]ow molecular weight starter, e.g. propylene glycol
(molecular weight 76 Da) is continuously introduced.”). The process made
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obvious by Pazos and Edwards, considered together, therefore would have
included this limitation.
Conclusion of Law
The evidence of record would have led a person of ordinary skill in
the art to reasonably expect that the catalyst disclosed by Edwards would act
as a differential catalyst in the process disclosed by Pazos.
SUMMARY
We affirm the rejection of claim 7 as unpatentable under 35 U.S.C.
§ 103(a) in view of Pazos, Edwards, and Behler.
Claims 8, 9, 11-13, 18, and 19 have not been argued separately and
therefore fall with claim 7. 37 C.F.R. § 41.37(c)(1)(vii).
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).

AFFIRMED

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