Ex Parte Wardius et al

Patent Trials and Appeals BoardMar 25, 2019

13190648 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/190,648 07/26/2011 157 7590 03/27/2019 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 FIRST NAMED INVENTOR Don S. Wardius 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BMSl 12018/MD08-36 2570 EXAMINER DOLLINGER, MICHAEL M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 03/27/2019 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 DONS. WARDIUS and STEVEN L. SCHILLING Appeal2018-006080 1 Application 13/190,648 Technology Center 1700 Before JEFFREY R. SNAY, BRIAND. RANGE, and SHELDON M. McGEE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 6-11, and 23-33. We have jurisdiction. 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to Appellants, Covestro LLC, is the real party in interest. Appeal Br. 2. Appeal2018-006080 Application 13/190,648 STATEMENT OF THE CASE2 Appellants describe the invention as relating "to amine-initiated polyether polyols produced in part from renewable resources." Spec. 1 :6-9. Claim 1, reproduced below with emphasis added to certain key recitations, is the sole independent claim on appeal and is illustrative of the claimed subject matter: 1. A process for the production of an amine-based polyol comprising reacting: a) an active-hydrogen containing starter consisting of an amine adduct comprising the reaction product of (i) an amine and (ii) an alkylene oxide in amounts such that from 1 to 2 moles of alkylene oxide are present for each amine group, and b) a triglyceride, in the presence of c) an alkylene oxide, and d) a catalyst to form an amine-based polyol characterized by a functionality of from about 1. 5 to about 3. 5, an equivalent weight of from about 100 to about 600, and an overall renewable content of from 20 to 85% by weight. Appeal Br. 11 (Claims App.). 2 In this Decision, we refer to the Final Office Action mailed December 20, 2017 ("Final Act."), the Appeal Brief filed February 12, 2018 ("Appeal Br."), the Examiner's Answer mailed May 18, 2018 ("Ans."), and the Reply Brief filed May 25, 2018 ("Reply Br."). 2 Appeal2018-006080 Application 13/190,648 REJECTION On appeal, the Examiner maintains the rejection of claims 1, 6-11, and 23-33 3 under 35 U.S.C. Â§ 103 as unpatentable over Lorenz et al. (US 9,284,401 B21; iss. Mar. 15, 2016 ("Lorenz")) in view of Dietrich et al. (US 5,886,062; iss. Mar. 23, 1999 ("Dietrich")). Ans. 3. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t 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 Appellants' arguments, we are not persuaded that Appellants identify 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 Appellants do not separately argue any dependent claim. We therefore limit our discussion to claim 1. All remaining claims stand or fall with that claim. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). The Examiner rejects claim 1 as under 35 U.S.C. Â§ 103 as obvious over Lorenz in view of Dietrich. Ans. 3. Because Appellants do not dispute most of the Examiner's findings, we focus on the issues Appellants raise. 3 The Examiner's Final Office Action and Answer both indicate that claim 2 is rejected. Ans. 3; Final Act. 2. This appears to be a typographical error; claim 2 is no longer pending. Appeal Br. 5. 3 Appeal2018-006080 Application 13/190,648 Appellants argue that, as a matter of claim construction, claim 1 excludes the use of any active-hydrogen containing starters other than the recited amine adduct. Appeal Br. 7, 9. The Examiner states that the Appellants' claim construction position is "convincing." Ans. 7. Because, for the reasons explained below, Appellants' argument does not identify reversible error even under Appellants' proposed claim construction, we do not need to address the correctness of this construction here. Appellants argue that Lorenz does not teach or suggest using claim 1 's recited amine adduct as its "only" starter in its process. Appeal Br. 7. With respect to use of the amine adduct, the Examiner finds that Dietrich teaches the recited amine adduct and determines that it would have been obvious to make use of Dietrich's adduct as the starter in the Lorenz process. Ans. 4--5. Appellants do not dispute the Examiner's findings regarding Dietrich, or the Examiner's stated reason why a person of skill in the art would have combined the teachings of these two references. Indeed, these issues were already decided in the prior appeal deriving from the instant patent application: Ex parte Wardius, Appeal 2016-004843 (PTAB May 15, 201 7). The reasoning from that prior decision is incorporated herein by reference. With respect to the amine adduct being the "only" starter in the process, Appellants emphasize the following passage from Lorenz: Prefabricated alkylene oxide addition products of the starter compounds mentioned, that is to say polyether polyol having OH numbers of from 6 to 800 mg KOH/g, can furthermore also be added to the process. 4 Appeal2018-006080 Application 13/190,648 See Appeal Br. 7 ( quoting Lorenz 4:26-29). 4 Based on this passage, Appellants argue that a person of ordinary skill in the art would have understood that "prefabricated alkylene oxide addition products of active- hydrogen containing starters can be used in conjunction with other active- hydrogen containing starters." Id. Appellants further argue that a person of skill in the art would not have had an expectation of success in using the reaction product of Dietrich in the Lorenz process without also using the starters taught at Lorenz 4:26-29. See Reply Br. 2-3. The preponderance of the evidence does not support Appellants' reading of Lorenz. Rather, Lorenz at 3:56-4:25 teaches the use of various starter compounds including "amino-functional starter compounds" (i.e., the genus from which Dietrich provides the more specific species of claim 1 ). The following Lorenz paragraph at 4:26-36 teaches addition products that "can furthermore also be added to the process." That paragraph also teaches that "[i]t is also possible also [sic] to employ polyester polyols." Lorenz does not indicate that any of these additional reactants of the paragraph at 4:26-36 must be added or are mandatory. See Ans. 6 (finding "it is not a requirement that the alkylene oxide adducts be used in conjunction with the non-alkylene oxide adduct starter compounds."). Thus, Lorenz would have reasonably suggested to a person having ordinary skill in the art that its various starter components could be used with or without one of the additional components. Therefore, even if claim 1 excludes additional 4 Both Appellants and the Examiner generally provide citations to the published patent application corresponding to Lorenz-US 2008/0114086 Al, published May 15, 2008. 5 Appeal2018-006080 Application 13/190,648 starter components ( as Appellants argue), Lorenz nonetheless reasonably would have suggested use of only the amino-functional starter component. Because Appellants' arguments do not identify reversible error, we sustain the Examiner's rejection. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1, 6-11, and 23-33. 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 6