Ex Parte Reese et al

Patent Trial and Appeal Board

Sep 5, 2017

13826394 (P.T.A.B. Sep. 5, 2017)

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;
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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”).
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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).
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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
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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
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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
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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,
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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
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