Appeal No. 2005-1140
Application 10/247,069
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
As an initial matter, we find that when the claim terms are given their broadest
reasonable interpretation in light of the written description in the specification as interpreted by
one of ordinary skill in the art, and without reading into the claims any limitation or particular
embodiment disclosed in the specification, see, e.g., In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989), the plain language of claim 1 specifies that the claimed process comprises
at least reacting the starter compound and alkylene oxide in the presence of a double metal
cyanide complex catalyst (DMC) in a reactor which provides stirring, such as the continuously
stirred tank reactor (CSTR) of claim 5; further reacting the product from the first reactor, which
can contain unreacted alkylene oxide within the range specified in claim 2, in a pipe reactor to
obtain a product that comprises at least substantially no alkylene oxide; and recovering the
product from the pipe reactor, with the condition that no starter, alkylene oxide and/or DMC is
added to the pipe reactor. Claim 6 specifies subsequent treatment of the product and claim 7
specifies adding anti-oxidant to the treated product of claim 6.
Appellants submit that “there is no teaching or suggestion in the ‘571 reference to modify
it in such a way as to arrive at the instant invention,” arguing that (1) the term “cook out” used in
the disclosure “[t]he second reactor may be used to fully ‘cook out’ alkylene oxide” (Pazos ‘571,
page 23, ll. 6-7) “is meant to be used interchangeably with ‘stripping’” and not “to fully react the
remaining alkylene oxide without adding additional components” as claimed, and (2) the
reference teaches away from the claimed invention by requiring “additional components to be
added to the second reactor in order to accomplish any further reaction” (brief, page 3).
We agree with the examiner’s response to appellants’ arguments (answer, pages 6-7),
adding the following for emphasis. We find that appellants’ arguments are contrary to their
characterization of Pazos ‘012 at page 2, ll. 4-10, of the specification wherein they acknowledge
the teachings of this reference that “[i]f unreacted alkylene oxide is present, the alkylene oxide
may be cooked out in a second reactor,” and that “the final cook out to facilitate reaction of
alkylene oxide may be performed without starter present.” Indeed, we find such disclosure at
Pazos ‘012, e.g., col. 11, ll. 9-13, and with respect to FIG. 2 at col. 12, ll. 25-38, which
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