Adkins, Rick et al.

Patent Trials and Appeals Board

Dec 26, 2019

13826911 - (D) (P.T.A.B. Dec. 26, 2019)

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.
13/826,911 03/14/2013 Rick Adkins BMS132011 / MD-07-072 9988
157 7590 12/26/2019
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
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 RICK ADKINS, JIONG ENGLAND, and DON WARDIUS
Appeal 2019-002243
Application 13/826,911
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 8–13, and 16–24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Convestro
LLC (previously Bayer MaterialScience LLC). Appeal Br. 1.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a polymer polyol and
process for making it. Spec. 1:5–23. In particular, Appellant describes the
invention as relating to stable, low-viscosity polymer polyols that could be
used for polyurethane foams or for adhesives, sealants, or elastomers. Id.
Claim 1 (reproduced below with emphasis added to certain argued
recitations) is illustrative:
Claim 1. A stable, low-viscosity polymer polyol comprising the
free-radical polymerization product of:
(a) a clear liquid base polyol component comprising a natural oil
base polyol having a mean hydroxyl functionality of 1. 7 to 5.0, a
number average molecular weight of about 350 to about 725 and an
OH number of 190 to 500, and which comprises the
transesterification/alkoxylation product of
(i) at least one initiator comprising at least one Zerewitinoff-
active hydrogen atom which comprises a hydroxyl group containing
compound, mixtures thereof, and/or alkoxylates thereof;
(ii) a natural oil component comprising soybean oil or
mixtures thereof, with the proviso that said soybean oil excludes
hydroxylated soybean oil;
and
(iii) at least one alkylene oxide;
in the presence of:
(iv) at least one alkaline catalyst;
wherein said alkylene oxide is completely reacted;
(b) at least one ethylenically unsaturated monomer which
comprises styrene, acrylonitrile or mixtures thereof;

2 In this Decision, we refer to the Final Office Action dated March 30, 2018
(“Final Act.”), the Appeal Brief filed September 28, 2018 (“Appeal Br.”),
and the Examiner’s Answer dated November 28, 2018 (“Ans.”).
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Application 13/826,911

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and, optionally,
(c) a preformed stabilizer;
in the presence of:
(d) a free-radical polymerization initiator;
and, optionally,
(e) a chain transfer agent.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Lorenz et al.
(“Lorenz”)
Adkins et al.
(“Adkins”)
Reaney et al.
(“Reaney”)

US 2008/0114086 A1

US 2010/0160469 A1

US 2010/0305344 A1
May 15, 2008

June 24, 2010

Dec. 2, 2010

REJECTION(S)
The Examiner maintains the following rejections on appeal:
A. Claims 1, 2, 4, 5, 8–10, 12, 13, and 16–24 under 35 U.S.C. § 103 as
obvious over Adkins in view of Lorenz. Ans. 3.
B. Claims 3 and 11 under 35 U.S.C. § 103 as obvious over Adkins in
view of Lorenz and Reaney. Id. at 6.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
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Application 13/826,911

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has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not present any substantively distinct arguments
for separate claims. Appeal Br. 4, 9. We therefore limit our discussion to
claim 1. All other claims stand or fall with that claim. 37 C.F.R. §
41.37(c)(1)(iv) (2013).
The Examiner finds that Adkins teaches the polymer polyol product of
claim 1 including a base polyol as prepared based upon the teachings of
Lorenz. Ans. 3; 7–8 (citing Adkins and Lorenz). The Examiner emphasizes
that “the primary reference Adkins clearly says that the polyols taught in
Lorenz are suitable as the ‘base polyol’ component for the free-radical
polymerization (See 0050).” Id. at 8. The Examiner finds that Lorenz, in
turn, teaches components (a)(i)–(iv) of claim 1 including use of soya oil
(claimed component (ii)). Id. at 7.
Appellant argues that the combination of references do not suggest the
base polyol component using hydroxylated soybean oil. Appeal Br. 4–6.
Appellant emphasizes that Adkins refers to hydroxylated soybean oil and
emphasizes that Lorenz does not suggest that soya oil would be suitable as a
liquid base polyol component. Id. at 5–6. Appellant’s argument
unpersuasively addresses the references individually; one cannot show
nonobviousness by attacking references individually when the rejection is
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based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellant’s argument is also unpersuasive because, while Adkins
refers to one embodiment that requires a hydroxylated derivative of a natural
oil (Adkins ¶¶ 42–47), Adkins also explains that natural oil polyols may
alternatively be subjected to processes “that do not lead to hydroxyl group
formation.” Adkins ¶ 47. In this other embodiment (“it is also possible,” id.
at ¶ 48), Adkins suggests use of an alkoxylated derivative of a natural oil as
described in Lorenz—“U.S. Published Patent Application[] . . .
2008/00114086.” Id. at ¶¶ 49–50. Lorenz, in turn, teaches an alkoxylation
product of (i) an inititator having a Zerewitinoff-active hydrogen atom
(Lorenz ¶ 29), (ii) any triglyceride including soya oil (id. at ¶ 33), (iii)
alkylene oxide (id. at ¶ 30), and (iv) an alkaline catalyst (id. at ¶ 36). The
combined references therefore reach the recitations of claim 1.
Appellant also argues that a person of skill in the art would not have
had a logical basis to use the Lorenz alkoxylation product with Adkins with
a reasonable expectation of success. Appeal Br. 6. We disagree. As
explained above, Adkins explicitly invites use of the Lorenz alkoxylated
derivative with the Adkins process. Adkins, therefore, suggests that such a
combination would have a reasonable expectation of success.
Appellant further argues that a person of skill in the art would not
have known that claim 1’s polymer polyols with specified base would have
“relatively high solids contents, very low viscosity, and good filterability.”
Appeal Br. 7. This argument is unpersuasive because these properties are
not recited in claim 1 and, as explained above, a person of skill in the art
would have had reason to combine the teachings of the references.
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Application 13/826,911

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Appellant did not argue unexpected results in the Appeal Brief, but
the Examiner interpreted Appellant’s argument concerning the superior
properties of claim 1’s product as being an argument attempting to establish
unexpected results. Ans. 8–10. To the extent Appellant’s argument
attempts to establish unexpected results, the argument is unpersuasive
because Appellant does not provide sufficient arguments supported by
evidence that establishes why the results are unexpected and Appellant does
not adequately explain why the purported unexpected results are reasonably
commensurate with the scope of claim 1. Ans. 8–10; see also Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness.” (emphasis in original)). Indeed, in the Appeal Brief,
Appellant does not allege that the allegedly beneficial properties would have
been surprising or unexpected.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejections.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 8–
10, 12, 13,
16–24
103 Adkins, Lorenz 1, 2, 4, 5,
8–10, 12,
13, 16–24

3, 11 103 Adkins, Lorenz,
Reaney
3, 11
Overall
Outcome
1–5, 8–13,
16–24

Appeal 2019-002243
Application 13/826,911

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED