BASELL POLIOLEFINE ITALIA S.R.L.

Patent Trials and Appeals Board

Dec 3, 2021

2021000090 (P.T.A.B. Dec. 3, 2021)

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.
15/309,155 11/04/2016 PAOLA MASSARI FE6925 7319
24114 7590 12/03/2021
LyondellBasell Industries
Legal IP Department
1221 McKinney Street, Suite 700
LyondellBasell Tower
Houston, TX 77010
EXAMINER
DAVIS, ZACHARY M
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
12/03/2021 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):
legal-IP@lyondellbasell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAOLA MASSARI, FABRIZIO PIEMONTESI,
GIANNI VITALE, CAROLINE CATHELIN, GIAMPIERO MORINI,
MARCO CIARAFONI, CLAUDIO CAVALIERI, and
ANDREA FELISATI
Appeal 2021-000090
Application 15/309,155
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and
JENNIFER GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5 and 7–11. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Basell Poliolefine Italia,
S.R.L. Appeal Br. 3.
Appeal 2021-000090
Application 15/309,155

2
CLAIMED SUBJECT MATTER
The claims are directed to a multilayer film with a skin layer
containing propylene ethylene copolymer. See, e.g., claim 1. According to
the Specification, as the amount of ethylene in the copolymer increases so
does the fraction of polymer that is soluble in xylene at room temperature.
Spec. ¶ 3. The xylene-soluble fraction negatively impacts the properties of
the end product film. Id. Appellant’s propylene ethylene copolymer contains
a xylene soluble fraction in the range of from 1.55 to less than 29.1 wt% and
meets a particular mathematical equation. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A multilayer film comprising at least a skin layer
further comprising a propylene ethylene copolymer comprising:
- an ethylene derived units content of between 1.0 wt%
and 15.0 wt%;
- a molecular weight distribution (MWD), expressed in
terms of Mw/Mn, of greater than 4.0;
- a content of xylene soluble fraction (XS; ISO 16152)
and an ethylene derived units content (C2) that fulfills the
following relationship:
XS< l.0296·e0.435C2
where XS is the percentage by weight of the fraction
soluble in xylene at 25 °C, and C2 is the percentage by weight
of ethylene units in the copolymers as determined via 13C
NMR,
and wherein the content of xylene soluble fraction ranges
from 1.55 to less than 29.1 wt%.
Appeal Br. 20 (Claims Appendix).
Appeal 2021-000090
Application 15/309,155

3
REJECTIONS
Claims 1–5 and 7–11 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 2.
Claims 1–3 and 7–11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Akai (WO 2012/063914, published May 18, 20122) in
view of Burmaster (US 2007/0202285 A1, published Aug. 30, 2007) and
ASTM Standard D5492-10. Final Act. 3.
Claims 4 and 5 are rejected under 35 U.S.C. § 103 as being
unpatentable over Akai in view of Burmaster and ASTM Standard D5492-
10 as evidenced by ASTM Standard D1238-13. Final Act. 7.
OPINION
Written Descriptive Support
The Examiner’s rejection of claims 1–5 and 7–11 under 35 U.S.C.
§ 112(a) is based on the finding that the lower endpoint of the xylene soluble
fraction range of from 1.55 wt% to less than 29.1 wt% recited in claim 1
lacks written descriptive support. Final Act. 3.
Appellant contends that the written description implicitly supports a
range of zero to less than 29.1 wt% and, thus, the written description
supports the narrower range of 1.55 to less than 29.1 wt%. Appeal Br. 11–
12. To bolster their case, Appellant cites cases where the written description
disclosed a range and a narrower range was claimed. Appeal Br. 11, citing In
re Wertheim, 541 F.2d 257 (CCPA 1976) (holding a disclosure of a broader

2 The Examiner relies on US 2013/0202864 A1, published Aug. 8, 2013 as
an English equivalent without objection by Appellant. Thus, we also rely on
this document.
Appeal 2021-000090
Application 15/309,155

4
range of 25 to 60% solids content supports a narrower range of 35 to 60%
solid content) and In re Blaser, 556 F.2d 534 (CCPA 1977).
The issue of adequate written descriptive support under 35 U.S.C.
§ 112(a) is a factual question resolved based upon “an objective inquiry into
the four corners of the specification from the perspective of a person of
ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). This factual question must be
assessed on a case-by-case basis. Purdue Pharma L.P. v. Faulding Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000).
The problem is that the facts here are different than those presented in
Wertheim and Blaser. Appellant’s written description does not disclose any
range of xylene soluble fraction. Instead, the written description discloses
that the xylene soluble fraction is an undesirable consequence of adding
ethylene. Spec. ¶ 3. Appellant may wish to reach a low content, but the
question is whether their Specification reasonably conveys that they were in
possession of propylene ethylene copolymers with xylene soluble fractions
as low as 1.55 wt%. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (“[T]he test for 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.”).
We are not persuaded that Appellant’s written description reasonably
conveys possession of xylene soluble fractions as low as 1.55 wt%.
The Specification discloses that the content of xylene soluble fraction
is something that those of ordinary skill in the art seek to minimize, but that
introducing ethylene as a comonomer can lead to “significant increases.”
Appeal 2021-000090
Application 15/309,155

5
Spec. ¶ 3. Thus, the Specification reasonably conveys that the lower limit is
potentially something greater than zero. How much greater than zero the
Specification does not explicitly say.
Appellant discloses a process of making the propylene ethylene
copolymer using a particular catalyst. Spec. ¶ 24. They characterize their
propylene ethylene copolymers as having a content of xylene soluble
fraction (XS) and ethylene derived units content (C2) that fulfill
mathematical relationships, one of which is XS< 1.0296·e0.435C2. Spec. ¶ 10.
Both XS and C2 must be chosen to fulfill the relationship. That an XS of
zero will be less than the right side of the formula does not mean that the
Specification reasonably conveys that Appellant was in possession of xylene
soluble fractions of zero or any other particular value. The minimum content
of xylene soluble fraction depends on the limitations of the process by which
the copolymer is made as well as the amount of ethylene input.
As pointed out by the Examiner, the lowest xylene soluble content
disclosed in the written description is 3.2 wt%. Spec. ¶ 82 at Table 4.
Thus, the written description fails to reasonably convey possession of
xylene soluble fractions of 1.55 wt%.

Obviousness
The Examiner rejects claims 1–3 and 7–11 under 35 U.S.C. § 103 as
being unpatentable over Akai in view of Burmaster and ASTM Standard
D5492-10. Final Act. 3. To reject claims 4 and 5, the Examiner adds ASTM
Standard D1238-13. Final Act. 7. Appellant’s arguments are directed to the
combination of Akai and Burmaster. Appeal Br. 12–18. We need only
consider the rejection of claim 1 to resolve the issues on appeal.
Appeal 2021-000090
Application 15/309,155

6
The Examiner finds that Akai teaches a multilayer film where the
surface layer comprises a propylene/α-olefin copolymer where the α-olefin
can be ethylene. Final Act. 3. The Examiner finds that Burmaster teaches a
propylene ethylene copolymer for use in films. Final Act. 4. According to
the Examiner, it would have been obvious to the ordinary artisan to use the
copolymer of Burmaster as the propylene ethylene copolymer in Akai’s skin
layer because Burmaster’s copolymer would improve clarity while
maintaining or improving physical properties. Final Act. 5, citing Burmaster
¶ 10.
Burmaster does not teach that the xylene soluble fraction content
conforms to the formula Appellant sets forth in claim 1. But, as pointed out
by the Examiner, Burmaster teaches producing a propylene ethylene
copolymer using a metallocene catalyst, which has the effect of lowering the
xylene soluble fraction content as compared to copolymers prepared using
traditional Ziegler-Natta catalysts. Final Act. 4; Burmaster ¶ 221. Further,
Burmaster teaches that “[i]n embodiments where the ethylene content is
greater than about 3 percent by weight of copolymer, for example, from
about 3 to about 5 percent by weight, a xylene soluble content of from about
2 to about 3 percent may be attained.” Burmaster ¶ 222. According to the
Examiner, “if one were to take an ethylene content of 4 wt% as an example,
Burmaster’s teaching that the xylene soluble content is between 2% and 3%
meets the limitation according to the formula recited in instant claim 1
wherein an ethylene content of 4 wt% yields a maximum XS of 5.9%.” Final
Act. 4.
Appellant contends that the Examiner does not dispute that Burmaster
fails to teach that the xylene soluble content conforms to the formula recited
Appeal 2021-000090
Application 15/309,155

7
in claim 1. Appeal Br. 13. This is true, but beside the point. Burmaster need
not explicitly state that the xylene soluble fraction content meet the terms of
the mathematical equation. It is enough that one can perform the calculation
and show that the equation is satisfied. The Examiner does just that (Final
Act. 4; Ans. 9). And Appellant has not identified an error in the Examiner’s
calculation.
Appellant further takes issue with the Examiner’s finding that
Burmaster teaches “that the metallocene catalyst used during the production
of the resin has an effect of lowering the xylene soluble content as compared
to polymers prepared using traditional Ziegler-Natta catalysts.” Appeal Br.
14, quoting Final Act. 4. Appellant states that they use Ziegler-Natta
catalysts and, “[t]hus, there is no teaching, suggestion or motivation to
modify Akai and Burmaster to arrive at the claimed xylene soluble content.”
Id. But the difference in catalyst is not particularly relevant here. This is
because claim 1 is not directed to a process that specifies the use of a
particular catalyst, but to a product. It is the composition and properties of
the product being claimed that are relevant here. Burmaster not only teaches
that their catalyst lowers the xylene soluble content, but provides specific
values of ethylene that result, according to the Examiner’s calculations, in
xylene soluble contents that are within those required by claim 1. As stated
by the Examiner, no modification of Burmaster is required to meet the
xylene solubles fraction content of the claim. Ans. 10.
Nor do we agree that Burmaster teaches away. Appeal Br. 15–17.
Burmaster explicitly teaches that “[i]n embodiments where the ethylene
content is greater than about 3 percent by weight of copolymer, for example,
from about 3 to about 5 percent by weight, a xylene solubles content of from
Appeal 2021-000090
Application 15/309,155

8
about 2 to about 3 percent may be attained.” Burmaster ¶ 222. The Examiner
provides an analysis supporting the finding that xylene soluble content
within Burmaster’s range meet the requirements of claim 1. Appellant has
not persuaded us otherwise.
Appellant has not identified a reversible error in the Examiner’s
obviousness rejection.
CONCLUSION
The Examiner’s decision to reject claims 1–5 and 7–11 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–11 112(a) Written
Description
1–5, 7–11
1–3, 7–11 103 Akai, Burmaster,
ASTM Standard
D5492-10
1–3, 7–11
4, 5 103 Akai, Burmaster,
ASTM Standard
D5492-10, ASTM
Standard D1238-
13
4, 5
Overall
Outcome
1–5, 7–11

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
Appeal 2021-000090
Application 15/309,155

9
AFFIRMED