Ex Parte Hofacker

Patent Trial and Appeal BoardNov 26, 2012

11214995 (P.T.A.B. Nov. 26, 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. 11/214,995 08/30/2005 Steffen Hofacker PO-8534/BMS041100 3739 23416 7590 11/27/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 11/27/2012 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 STEFFEN HOFACKER ____________ Appeal 2011-012194 Application 11/214,995 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and GEORGE C. BEST, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellant appeals from the Examiner's rejections of claims 1, 4, and 5 under 35 U.S.C. Â§ 112, 1st paragraph, as failing to comply with the written description requirement and under 35 U.S.C. Â§ 103(a) as unpatentable over Hofacker (US 2003/0125576 A1, published Jul. 3, 2003) in view of Kurian (US 6,350,895 B1, issued Feb. 26, 2002). We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appeal 2011-012194 Application 11/214,995 2 Appellant claims a process for preparing an oligocarbonate polyol having a methyl ether group content of less than 0.1 mol% which comprises reacting dimethyl carbonate and an aliphatic polyol in the presence of a catalyst comprising yttrium (III) acetylacetonate (claim 1). Representative claim 1, the sole independent claim on appeal, reads as follows: 1. A process for preparing an oligocarbonate polyol having a number-average molecular weight of 500 to 5000 g/mol and having a methyl ether group content of less than 0.1 mol %, which comprises reacting dimethyl carbonate and an aliphatic polyol in the presence of a catalyst comprising an yttrium (III) acetylacetonate. We will sustain each of the above rejections for the reasons expressed in the Answer and below. The Â§ 112, 1st paragraph (written description), Rejection "[T]he test for [written description] sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). "[T]he purpose of the written description requirement is to 'ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.'" Id. at 1353-54 (quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)). According to the Examiner, "[a]dequate support has not been provided [for] the claimed ether group content for the full scope of the Appeal 2011-012194 Application 11/214,995 3 claims [because] . . . support only exists for a methyl ether content of less than 0.1 mol % as it relates to the oligocarbonate diol produced by the method and components (i.e.; polyol) of [Specification] Example 2" (Ans. 3). It is Appellant's position that paragraphs 14-15 of the 1st Hofacker Declaration and the publication EP 0343572 referred to therein evince that various polyols will react similarly with a suitable catalyst (App. Br. 5). Based on this evidence, Appellant argues that "[t]he scope of the inventive processes should not be limited to hexanediol simply because it is the polyol employed in the working example of the Specification" (id. at 6). Appellant further argues that the rejection is even less substantiated with respect to claim 5 which defines a more specific aliphatic polyol reactant (id.). Appellant's argument and evidence lack convincing merit for a number of reasons. First, Appellant's evidence possesses limited probative value for the proposition that various polyols will react similarly with a suitable catalyst. As support for this proposition, the 1st Hofacker Declaration relies on an unattached publication, namely, EP 0343572 (Decl. para. 15). However, the Declaration fails to identify and discuss specific disclosures in this publication but instead merely refers to "the examples" (id.) generally as allegedly showing that, "in the presence of a suitable catalyst, various polyols, both linear and branched, and mixtures thereof, react similarly to produce the desired products" (id.). Due to this lack of specificity, the 1st Hofacker Declaration and the reference therein to EP 0343572 are of limited value in assessing whether the claimed methyl ether group content would be Appeal 2011-012194 Application 11/214,995 4 obtained when using polyols other than the hexanediol of Specification Example 2. Second, Appellant's argument and evidence are directed solely to the written description issue raised by the broad scope encompassed by the claimed aliphatic polyol relative to the specific hexanediol disclosed in Example 2. Appellant fails to address the written description issue raised by the broad claim scope relative to other specifics of the Example 2 disclosure. For example, the disclosure of Example 2 describes a method having not just specific reactants but also specific pressures, temperatures, times, and reactant/catalyst amounts, whereas the appealed claims are not limited to any such method specifics. Therefore, the argument and evidence presented by Appellant are also unpersuasive because they do not address the Examiner's written description concerns regarding the breadth of the claimed method relative to the specific method disclosed in Example 2. For the reasons stated above and in the Answer, Appellant's original Specification disclosure would not reasonably convey to those skilled in the art that Appellant had possession on the application filing date of the subject matter broadly defined by the appealed claims. It follows that the scope of protection sought by Appellant's broad claims overreaches Appellant's scope of contribution as described in the Specification. We sustain the Â§112, 1st paragraph, rejection of claims 1, 4, and 5 as failing to comply with the written description requirement. The Â§103 Rejection For the reasons detailed in the Answer, we agree with the Examiner that it would have been prima facie obvious to modify the transesterification Appeal 2011-012194 Application 11/214,995 5 process of Hofacker by replacing Hofacker's yttrium-based catalyst (i.e., yttrium tris(2,2,6,6-tetramethyl-3,5-heptanedionate)) with yttrium acetylacetonate as claimed in view of Kurian's teaching that yttrium acetylacetonate as well as yttrium tris(2,2,6,6-tetramethyl-3,5- heptanedionate) are known transesterification catalysts (Ans. 4-5). Appellant argues that the Examiner has failed to establish a prima facie case of obviousness because "there is no reasonable expectation of success provided by either reference as to producing products having a reduced methyl ether content as claimed" (App. Br. 8; emphasis deleted). This argument is unpersuasive. It would have been prima facie obvious to modify Hofacker's transesterification process as proposed by the Examiner based on a reasonable expectation that the yttrium acetylacetonate of Kurian would successfully catalyze the desired transesterification reaction. The claimed methyl ether group content of less than 0.1 mol % is merely another advantage flowing naturally from following the suggested modification. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), affâ€™d. mem., 795 F.2d 1017 (Fed. Cir. 1986) (holding that the recognition of another advantage flowing naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise be obvious). Appellant also argues that any prima facie case of obviousness has been successfully rebutted by evidence of unexpected results (App. Br. 8). In particular, Appellant relies on the 1st and 2nd Hofacker Declarations as showing that the claimed yttrium acetylacetonate unexpectedly yielded an ether content of less than 0.01 mol% when reacting dimethyl carbonate and Appeal 2011-012194 Application 11/214,995 6 1,6-hexanediol as compared to an ether content of 3.0 mol% obtained with yttrium heptanedionate (id. at 8-10). We agree with the Examiner that this declaration evidence is inadequate to successfully rebut the prima facie case of obviousness because it is not commensurate in scope with the appealed claims (Ans. 6-8). The Examiner correctly explains that the appealed claims are not limited to the particular reactants and process conditions of the comparison showing presented in the Hofacker Declarations (id. at 7). As properly observed by the Examiner, "[i]t is not seen that a trend supportive of [A]ppellant's position can be reasonably established from what is essentially a single data point" (id. at 8). Stated differently, it cannot be determined from Appellant's evidentiary showing whether the broad scope of processes encompassed by the appealed claims would yield an unexpectedly low methyl ether content. For all we know based on this narrow showing, the inventive yttrium acetylacetonate yielded a methyl ether content typical of yttrium-based catalysts whereas the comparative yttrium heptanedionate yielded an atypically large methyl ether content. We sustain the Â§103 rejection of claims 1, 4, and 5 as unpatentable over Hofacker in view of Kurian. Conclusion The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED kmm