Ex Parte Beckers et al

Patent Trial and Appeal BoardDec 18, 2012

10961271 (P.T.A.B. Dec. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/961,271 10/08/2004 Johannes Gerhardus Joseph Beckers TS1368 (US) 6720 23632 7590 12/18/2012 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER COONEY, JOHN M ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 12/18/2012 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 JOHANNES GERHARDUS JOSEPH BECKERS, MICHIEL BAREND ELEVELD, and GERARDUS WILHELMUS HENRICUS INGENBLEEK ____________ Appeal 2011-012108 Application 10/961,271 Technology Center 1700 ____________ Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge DECISION ON APPEAL The named inventors (hereinafter “the Appellants”)1 seek our review under 35 U.S.C. § 134(a) of a final rejection of claims 1, 3-7, and 13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm for the reasons given by the Examiner. 1 The Appellants identify the real party in interest as “Shell Oil Company.” Appeal Brief filed (“Br.”) at 2. Appeal 2011-012108 Application 10/961,271 2 STATEMENT OF THE CASE The Appellants describe and claim a process for preparing a polyoxyalkylene polyether polyol catalyzed by a dimetal cyanide complex catalyst. Specification (“Spec.”) 1, ll. 5-8; Br. 7-8 (Claims App’x). Representative claim 1 is reproduced below (with the disputed limitation shown in italics): 1. A process comprising: contacting an initiator compound having from 2 to 6 active hydrogen atoms with a crude alkylene oxide in the presence of a catalyst comprising a dimetal cyanide complex to yield a polyalkoxylene polyether polyol, wherein the crude alkylene oxide comprises on total composition from 95.00% by weight to 99.90% by weight of one or more alkylene oxides selected from the group consisting of ethylene oxide, propylene oxide and butylene oxide. Br. 7. The Examiner rejected the claims as follows: I. Claims 1, 3-7, and 13 under 35 U.S.C. § 103(a) as unpatentable over Le-Khac2 in view of Larson;3 and II. Claims 1, 3-7, and 13 on the ground of obviousness-type double patenting over claims 1-15 of U.S. Patent 7,300,993 B2 issued to Eleveld on November 27, 2007 (“’993 Patent”) in view of Larson. Examiner’s Answer mailed May 9, 2011 (“Ans.”) 3-12. 2 U.S. Patent 5,470,813 issued November 28, 1995. 3 U.S. Patent 4,692,535 issued September 8, 1987. Appeal 2011-012108 Application 10/961,271 3 DISCUSSION In contesting the two rejections, the Appellants argue the claims together. Br. 2-5. Therefore, in addressing each of the two rejections below, we select claim 1 as representative and confine our discussion to this selected claim. Claims 3-7 and 13 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). I. With respect to Rejection I, the Appellants do not dispute the Examiner’s position that a person of ordinary skill in the art would have had a sufficient reason to combine the teachings of Le-Khac and Larson. Br. 2- 4; Ans. 3-4. Rather, the Appellants contend that Larson does not disclose “using a crude propylene oxide,” and therefore “[t]he references . . . do not alone or in combination teach or suggest all of the limitations of the claims.” Id. at 4-5. Specifically, the Appellants argue that “it would not have been obvious to use this crude propylene oxide . . . because [Larson] itself teaches that the propylene oxide must be purified before it can be used to make polyether polyols.” Id. at 3. Thus, a dispositive issue for Rejection I is: Did the Appellants show reversible error in the Examiner’s finding that Larson describes the use of the claimed “crude . . . propylene oxide,” as that term would have been understood by one skilled in the relevant art? Appeal 2011-012108 Application 10/961,271 4 We find no error in the Examiner’s finding that Larson describes the use of “crude . . . propylene oxide,” as that term would have been understood by one skilled in the relevant art. Ans. 4, 7-9. Even assuming that Larson would not have disclosed or suggested the use of crude propylene oxide (purity of 95% or above) per se, the Examiner was correct in finding that the Appellants’ recited “crude . . . propylene oxide” (purity of 95.00% to 99.90% by weight), as broadly defined in the Specification, reads on Larson’s purified crude propylene oxide at a disclosed purity level of, e.g., 99.9%. Spec. 8, l. 20 to 9, l.10; Larson col. 2, ll. 53-63. Therefore, we uphold Rejection I. II. The Appellants argue that the double patenting rejection, which also relies on Larson, should be reversed for reasons similar to those offered against Rejection I. Br. 5. We find this argument unpersuasive for the same reasons discussed above with respect to Larson. Therefore, we uphold Rejection II. SUMMARY The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 3-7, and 13 as unpatentable over Le-Khac in view of Larson is affirmed. The Examiner’s rejection on the ground of obviousness-type double patenting of claims 1, 3-7, and 13 over claims 1-15 of U.S. Patent 7,300,993 B2 in view of Larson is affirmed. Appeal 2011-012108 Application 10/961,271 5 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 cam