Ex Parte Reese et alDownload PDFPatent Trial and Appeal BoardSep 5, 201713826394 (P.T.A.B. Sep. 5, 2017) Copy Citation 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. 13/826,394 03/14/2013 Jack Reese BMS132028 / MD10-09 9091 157 7590 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 09/07/2017 EXAMINER MURESAN, ANA Z ART UNIT PAPER NUMBER 1671 NOTIFICATION DATE DELIVERY MODE 09/07/2017 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): veronica.thompson@covestro.com 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 JACK REESE and PAUL WEBB1 Appeal 2015-008295 Application 13/826,394 Technology Center 1600 Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to a continuous process for the production of a polyoxyalkylene poly ether polyol. Claims 1—28 are on appeal as rejected under 35 U.S.C. § 103(a) and for obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as “Bayer MaterialScience LLC.” App. Br. 1. Appeal 2015-008295 Application 13/826,394 STATEMENT OF THE CASE The Specification states, “[t]he preparation of polyoxyalkylene polyols by double metal cyanide (DMC) catalysts is known” and “[w]hile double metal cyanide catalysts provide numerous advantages in preparing polyoxyalkylene polyols, there are, unfortunately, some disadvantages to this type of catalysis. . . . These disadvantages include the tendency of the catalyst to deactivate.” Spec. 1:11—29. The Specification further states: The present invention allows the preparation of low molecular weight polyoxyalkylene polyether polyols by a continuous process in which a low molecular weight starter is alkoxylated in the presence of a double metal cyanide catalyst by carefully maintaining the pressure during the oxyalkylation reaction at 45 to 55 psia to prevent catalyst deactivation, even in the presence of high levels of low molecular weight starters. Id. at 3:27-32. Claims 1, 18, 19, 21, 23, and 28 are independent claims. Claim 1 is representative and is reproduced below: 1. A continuous process for the production of a polyoxyalkylene polyether polyol having a hydroxyl content of from about 3.4 to about 12.1% by weight comprising: (a) establishing oxyalkylation conditions in a continuous oxyalkylation reactor in the presence of a double metal cyanide catalyst; (b) continuously introducing alkylene oxide and a low molecular weight starter into the continuous oxyalkylation reactor, wherein the starter has a number average molecular weight of from 50 to 250; (c) continuously recovering a partially oxyalkylated polyether polyol from the continuous oxyalkylation reactor; 2 Appeal 2015-008295 Application 13/826,394 wherein (i) the oxyalkylation in the continuous oxyalkylation reactor occurs at a pressure of at least 45 psia to prevent deactivation of the DMC catalyst; (ii) the concentration of unreacted alkylene oxide in the contents of the continuous reactor is maintained at a level of from 1 to 3% by weight; and (iii) the hydroxyl content of the reactor contents is maintained at 3.4 to 12.1 % by weight; and (d) allowing further reaction of the partially oxyalkylated polyether polyol which is recovered from the continuous oxyalkylation reactor to occur until the unreacted alkylene oxide content of the mixture is reduced to 0.001 % or less by weight. App. Br. 14 (Claims App’x). The following rejections are on appeal: Claims 1—28 stand rejected under 35 U.S.C. § 103(a) over Pazos.2 Final Action 6—10. Claims 1—28 stand rejected under 35 U.S.C. § 103(a) over Sasaki.3 Id. at 10-12. Claims 1—28 stand rejected under 35 U.S.C. § 103(a) over Beisner.4 Id. at 12—15. Claims 1—28 stand provisionally rejected under the doctrine of non- statutory obviousness-type double patenting over claims 1—28 of ’909 application.5 Id. at 16—17. 2 U.S. Patent 5,777,177 (issued July 7, 1998) (“Pazos”). 3 U.S. 2013/0059936 A1 (published March 7, 2013) (“Sasaki”). 4 U.S. Patent 6,066,683 (issued May 23, 2000) (“Beisner”). 5 Co-pending U.S. Patent Application 13/528,909 (“’909 application”). 3 Appeal 2015-008295 Application 13/826,394 DISCUSSION I. Obviousness “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). “Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). “[Wjhere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456 (CCPA 1955). However, “[t]his rule is limited to cases in which the optimized variable is a ‘result- effective variable.’” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)); see also In re Boesch, 617 F.2d 272, 276 (Fed. Cir. 1980) (“[Djiscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art.”). When a prima facie case of obviousness has not been established, the rejection must be reversed. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). 4 Appeal 2015-008295 Application 13/826,394 Obviousness and Pazos We find the Examiner has not established a prima facie case that claim 1 would have been obvious over Pazos. In making this rejection, the Examiner, in most relevant part, states: [Pazos] teaches adjusting the pressure throughout the process and it does not teach increasing the pressure of at least 45 psia as recited by the instant process (nevertheless, the prior art teaches optimization of pressure of the process [)].... While not teaching a specific pressure of the process, [Pazos] discloses increasing the pressure, therefore, it would be obvious for a phosita to optimize reaction parameters such as pressure and temperature, because such optimization is routine in chemical art, as discussed in the previous office action. Final Action 8. Thus, the Examiner concedes Pazos does not expressly disclose the claimed “pressure of at least 45 psia to prevent deactivation of the DMC,” but determines that it is merely an optimizable feature based on Pazos’s disclosure of increasing pressure during processing. Appellants argue, inter alia: [Pazos] is silent, however, as to the pressure during the batch run. The only indication of the pressure in any of the working examples of the Pazos reference is in Example 18 which discloses “[T]he pressure in the reactor drops from 21 psig to -12 psig ...” during the catalyst activation. The final pressure of -12 psig (or 2 psia) is well below the 45 psia required in the instant application. App. Br. 7. We find this argument persuasive. There is no indication in Pazos that pressure is a result-effective variable or optimizable in any way; Pazos does not disclose adjusting pressure for any reason. Pazos discusses reactor pressure during processing only as processing data indicative of the activation status of catalyst. Pazos 5 Appeal 2015-008295 Application 13/826,394 10:8—9, 12:8—10, 13:33—35, 13:59-60. Here, pressure is not disclosed to be a result-effective variable by Pazos and, so, it would not have been obvious to optimize pressure in view of the reference. Even relying upon a KSR (KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)) rationale, the Examiner must provide some basis for optimizing a variable such as pressure, and no such evidence has been provided. See MPEP § 2144.05(II)(B). For the above reasons, we reverse this rejection. Obviousness and Sasaki We find the Examiner has not established a prima facie case that claim 1 would have been obvious over Sasaki. In making this rejection, the Examiner, in most relevant part, states, “the internal pressure of the pressure resistant reactor was once increased and then gradually decreased [0199] ; the first polymerization step may be either batch or continuous method [0070].” Final Action 11. The Examiner further states: The process for producing polyoxyalkylene polyol of [Sasaki] recites the workup steps in alternative, and does not teach the specific pressure parameters or the build ratio in the reactor as recited by instant claims, and does not disclose specifically glycerine as the low molecular starter. [N]ote applicant(s) “comprising” is open language and does not exclude those additional elements disclosed therein (i.e. additional polymerization steps). Id. The Examiner found it would have been obvious to optimize the Sasaki process by, e.g., adjusting the pressure of the process to enhance efficiency. Id. Appellants present three arguments over this rejection: (1) Sasaki is a 3-step polymerization process and, while its first step is similar to the claimed invention, it has two more steps that are not compatible with the 6 Appeal 2015-008295 Application 13/826,394 claimed invention and there would have been no reason to drop them from the Sasaki method; (2) Sasaki does not disclose continuously adding starter; and (3) based on Sasaki, one of skill could not predict or expect to be able to control polymerization by maintaining a pressure of at least 45 psia. App. Br. 8-10. Appellants do not contest that Sasaki discloses a continuous process and the Examiner is correct that the “comprising” transition language of the claim does not limit its method to only the steps recited and it is open to additional steps. Further, if Sasaki’s process is continuous, it would be obvious that the starter would have to be continuously provided for the process to continue. Thus, Appellants first and second arguments regarding Sasaki are not persuasive. Like Pazos, Sasaki is silent on controlling pressure, even though, again, like Pazos, it discloses observing pressure (e.g., “the internal pressure of the pressure resistant reactor was once increased and then gradually decreased, and it was confirmed to be the same internal pressure of the pressure resistant reactor immediately before supply of PO.”). See Sasaki, e.g., 1199. Sasaki does not teach adjusting pressure or controlling pressure in any way, or for any reason, or that doing so can result in any effect. Based on Sasaki, reactor pressure is not a result-effective variable and it would not have been obvious to optimize pressure in view of the reference. For the above reasons, we reverse this rejection. Obviousness and Beisner We find the Examiner has not established a prima facie case that claim 1 would have been obvious over Beisner. In making this rejection, the 7 Appeal 2015-008295 Application 13/826,394 Examiner, in most relevant part, states, “[a] co-feed of propylene oxide and ethylene oxide is introduced into the reactor, and product continuously removed; In the continuous addition of starter process, either batch operation or continuous operation may be practiced,” and “[pjroduct takeoff is continuous; a takeoff stream from the reactor is used to activate further DMC catalyst.” Final Action 12—13. The Examiner further states: Regarding claims 1, 11, 12, 18, 24-26, [Beisner] teaches on col. 2 lines 6-8 employing of lower temperatures and pressures results in some improvement while on col. 8 lines 42-45 that the temperature of the reactor of 110 °C, and propylene oxide, or a mixture of propylene oxide containing a minor amount of ethylene oxide is added to pressurize the reactor, generally to about 10 psig. Id. at 14. Again, the Examiner determined that pressure was an optimizable variable based on the reference. Appellants concede Beisner teaches a continuous process and continuously adding starter, but argue the reference does not teach that partially oxyalkylated polyether polyol is recovered. App. Br. 10. Also, Appellants argue the reference does not suggest a pressure of at least 45 psia. Id. at 10-11. Appellants argue Beisner’s disclosure of pressures does not identify pressure as an optimizable variable (similar to Pazos). Id. We find these arguments persuasive. The Examiner does not address whether Beisner teaches that the continuously recovered product is or is not a “partially oxyalkylated polyether polyol,” and merely indicates that “product takeoff is continuous.” Ans. 20. Further, we find that Beisner is like the other cited references in that it mentions pressure as indicative of the activation state of the catalyst, 8 Appeal 2015-008295 Application 13/826,394 but does not indicate it can be controlled to influence the polymerization process in any way. See, e.g., Beisner 8:41—47. (“rapid decrease in pressure indicates ... the catalyst is active”). Beisner does not suggest controlling reactor pressure for any reason or that doing so can result in any effect. Therefore, reactor pressure is not taught to be a result-effective variable and it would not have been obvious to optimize pressure in view of the reference. For the above reasons, we reverse this rejection. II. Double Patenting The double patenting rejection is over claims 1—28 of U.S. Patent Application No. 13/528,909, which the Examiner finds are patentably indistinct from Appellants’ claim 1. Appellants do not contest the substance of the obviousness-type double patenting rejection and state, “Appellants have previously agreed to file a terminal disclaimer in the instant application once they are advised of allowable subject matter.” App. Br. 12. Under this Board’s precedential decision in Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010), we decline to address the merits of this rejection. SUMMARY The obviousness rejection over Pazos is reversed. The obviousness rejection over Sasaki is reversed. The obviousness rejection over Beisner is reversed. We decline to address the provisional double patenting rejection. REVERSED 9 Copy with citationCopy as parenthetical citation