Ex Parte Schaefer

Board of Patent Appeals and Interferences

Jun 28, 2010

10840804 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JARED JOHN SCHAEFER,
Appellant.
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Appeal 2010-001471
Application 10/840,804
Technology Center 1600
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Decided: June 29, 2010
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Before SALLY GARDNER LANE, RICHARD TORCZON, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellants’ claims 1-23. (App. Br. 2). We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Appellant’s application is directed to the production of purified,
moderately esterified polyol fatty acid polyesters for use in laundry, textile,
food, and cosmetic compositions. (Spec. p. 1, ll. 17-24).
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The Examiner relied on WO 99/49071, published September 30, 1999
(“Trout”).
The Examiner rejected claims 1-23 under 35 U.S.C. § 103(a) over
Trout. (Ans. 3). Appellant identifies three groups of claims for separate
argument (claims 1-4, 5-17, and 18-23), but present essentially the same
argument for each group, i.e., that elements present in claim 1 are not taught.
Thus, we focus on claims 1 in our review. See 37 C.F.R.
§ 41.37(c)(1)(vii).
II. FINDINGS OF FACT
1. Appellant’s claim 1 recites1:
A process for the preparation of a purified moderately
esterified polyol fatty acid polyester composition comprising
the steps of:
a) forming an initial reaction mixture, said initial reaction
mixture comprising:
i) a polyol portion;
ii) a highly esterified polyol fatty acid polyester;
iii) a moderately esterified polyol fatty acid
polyester; and
iv) a catalyst;
wherein the molar ratio of said polyol portion, said
highly esterified polyol polyester portion, and said moderately
esterified polyol polyester portion should be chosen such that
the final ratio of total fatty acid esters to total polyol backbones
is in the range from about 3.2:l to about 6.4:l; and
wherein the molar ratio of said catalyst to said highly
esterified polyol polyester is in the range of from about 0.01:1
to about 10:l;
and

1 Claim 1 has been modified by the addition of an indentation. See 37 C.F.R.
§ 1.75(i).
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b) forming an initial reaction product by reacting said
initial reaction mixture in an inert atmosphere, in the presence
of a sufficient amount of agitation, for a period of time in the
range of from about 30 minutes to about 6 hours, and at a
temperature in the range of from about 80oC to about 140°C.

(App. Br. 16, Claims App’x).
2. Appellant’s specification provides:
As used herein, the term "moderately esterified polyol
polyester" is intended to include those esters of the polyol
having a degree of esterification in excess of the degree of
esterification of the polyol, but less than the degree of
esterification of the highly esterified polyol fatty acid
polyester. As used herein, the term "degree of esterification"
refers to the average percentage of hydroxyl groups of a polyol
composition that have been esterified.

In one embodiment of the present invention the polyol is
sucrose having eight hydroxyl groups. The moderately
esterified sucrose polyester preferably has a degree of
esterificiation of from about 30% to about 90%.

(Spec. p. 5, ll. 30-37 (emphasis added)).
3. Trout teaches a process for purifying polyol fatty acid
polyesters. (Trout p. 1, second paragraph).
4. Trout teaches that the reaction mixture includes unesterified
first polyol, an esterified second polyol, and a catalyst, along with an
emulsifying agent, which can be a partially esterified polyol. (Trout p. 10,
first and third paragraph, and pp. 17-18, claims 11-14).
5. Trout teaches heating the mixture at a temperature sufficient to
achieve transesterification, preferably from 70 oC to about 150 oC. (Trout
p. 10, first paragraph, and p. 11, first paragraph).
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6. Trout teaches producing products that are at least about 50%
esterified. (Trout p. 10, first paragraph).
7. Trout does not teach the ratios recited in claim 1.
III. ISSUE
Would one skilled in the art have had reason to choose the claimed
ratios in view of Trout?
IV. ANALYSIS
Appellant agrees that Trout teaches a method for preparing a purified
esterified polyol fatty acid polyester by forming an initial reaction mixture
comprising an unesterified polyol portion, an esterified polyol fatty acid
polyester, an emulsifying agent, and a catalyst. (App. Br. 9; FF2s 4-5; Trout
p. 10, first and third paragraph, p. 11, first paragraph, and pp. 17-18, claims
11-14).
Appellant argues that Trout does not teach that “the molar ratio of said
polyol portion, said highly esterified polyol polyester portion, and said
moderately esterified polyol polyester portion should be chosen such that the
final ratio of total fatty acid esters to total polyol backbones is in the range
from about 3.2:l to about 6.4:l.” (FF 1; App. Br. 16, Claims App’x).
However, we do not understand claim 1 to require a particular molar ratio of
total fatty acid esters to total polyol backbones, since the claim requires only
that ratios “should be chosen” not must be chosen. In contrast, Appellant
cites a molar ratio of catalyst to highly esterified polyol polyester that “is in
the range from about 0.01:1 to about 10:1.” (FF 1; App. Br. 16, Claims

2 “FF” indicates Finding of Fact.
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App’x (emphasis added)). The use of “is” in the same claim as “should be”
indicates that the ratio of polyol, highly esterified polyol polyester, and
moderately esterified polyol polyester portions was not intended to be
restrictive. See In re Moore, 439 F.2d, 1232, 1235 (CCPA 1971) (“the
claims must be analyzed first in order to determine exactly what subject
matter they encompass. The subject matter there set out must be presumed,
in the absence of evidence to the contrary, to be that ‘which the applicant
regards as his invention.’” (quoting 35 U.S.C. § 112, second paragraph)).
Thus, this recited ratio is not a point of distinction between Trout and
claim 1.
Furthermore, the method of Trout and Appellant’s method seek to
produce the same end product, i.e., “moderately esterified polyol fatty acid
polyesters.” One skilled in the art would have had reason to select ratios,
using routine experimentation, that lead to the desired end product.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

KSR Int’l Co. v Teleflex, Inc., 550 U.S. 398, 421 (2007).
Appellant does not argue, or point to evidence showing, that it would
not have been within the skill of those in the art to find, through routine
experimentation, the ratios of the polyol, highly esterified polyol polyester
and moderately esterified polyol polyester or of the catalyst and highly
esterified polyol polyester that would lead to the desired end product.
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Appellant argues that because Trout only teaches producing highly
esterified polyol fatty acid polyesters there would not have been any
motivation for one of skill in the art to optimize the ratios of reactants as
claimed to produce the moderately esterified polyol fatty acid polyesters.
(App. Br. 9-10). Appellant’s specification defines “moderately esterified
polyol polyester” broadly as a polyol polyester that has a percentage of
esterified hydroxyl groups that is more than a polyol (that is 0%
esterification) and less than a “highly esterified polyol fatty acid polyester,”
which is not defined. (FF 2; Spec. p. 5, ll. 30-34). Appellant’s specification
provides an embodiment wherein a moderately esterified sucrose polyester
has a degree of esterification from about 30% to about 90%. (Id.). Trout
teaches producing polyol fatty acid polyesters that are at least about 50%
esterified (FF 6; Trout p. 10, first paragraph), falling within the broad range
of percent esterification Appellant defines as “moderate.” Thus, Trout
teaches producing a polyol fatty acid polyester that is “moderately
esterified,” as claimed.
Appellant also argues that the claimed process is a reaction that begins
with a finished highly esterified polyester and reverses the transesterification
process with unesterified polyol over a catalyst to produce moderately
esterified polyester product. (App. Br. 8). Appellant argues that Trout does
not teach this process, but instead teaches a forward process of preparing
highly esterified polyol fatty acid polyesters. (App. Br. 8 and 9).
Appellant’s claim 1 recites the steps of forming an initial reaction mixture
with specified reactants and forming an initial reaction product. (App.
Br. 9). Appellant does not claim other steps that distinguish a “forward”
reaction from a “reverse” reaction. “Where . . . the result is a necessary
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consequence of what was deliberately intended, it is of no import that the
article’s authors did not appreciate the results.” MEHL/Biophile Int’l Corp.
v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999). Thus, we are not
persuaded that Trout does not teach the claimed process.
Appellant argues that Trout does not teach including highly esterified
polyol fatty acid polyesters in the initial reaction mixture. (App. Br. 8-9).
As the Examiner found, Trout teaches a “second” polyol esterified with fatty
acids can be fatty acid triglyceride (Trout pp. 18-19, claim 15), which we
understand to be an ester composed of a glycerol bound to three fatty acids.
Appellant does not dispute the Examiner’s finding that the fatty acid
triglyceride is a highly esterified polyol fatty acid polyester. (Ans. 14-15;
Trout pp. 18-19, claim 15). Trout teaches including highly esterified polyol
fatty acid polyesters in the initial reaction mixture. Appellants have not set
forth a persuasive argument against the rejection of claims 1-23.
V. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1-23 under 35 U.S.C. § 103(a) as being
rendered obvious by Trout is AFFIRMED.
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)(iv)(2007).

AFFIRMED
Appeal 2010-001471
Application 10/840,804

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