Ex Parte Bai et al

Board of Patent Appeals and Interferences

Mar 30, 2009

10468978 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte XINLAI BAI, MARIA A. APECETCHE, KEVIN J. CANN,
DAVID L. RAMAGE, NATARAJAN MURUGANANDAM,
ARDENHU SEN, MATTHEW J. FEDEC, WOO MIN SONG,
DAVID M. REBHAN, and ALBERT L. WIDMAR
______________

Appeal 2008-5988
Application 10/468,978
Technology Center 1700
_______________

Decided: 1 March 30, 2009
_______________

Before CHARLES F. WARREN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the “Decided” date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5988
Application 10/468,978
DECISION ON APPEAL
Applicants appeal to the Board from the decision of the
Primary Examiner finally rejecting claims 1 through 14 and 16 through 18 in
the Office Action mailed March 24, 2006. 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a process for producing
elastomeric polymer particles in a gas phase polymerization reaction, and is
representative of the claims on appeal:
1. A process for producing elastomeric polymer particles in a gas
phase polymerization reaction comprising:
a) introducing one or more polymerization monomers comprising one
or more conjugated or nonconjugated diene monomers having 4 to 20
carbons into a reactor operating under gas phase polymerization conditions
at a temperature of at least 50 ºC;
b) introducing into said reactor a flow aid material that is capable of
preventing substantial formation of polymer particle agglomerates;
c) introducing a hindered phenol and a polymerization catalyst
mixture comprising a group 4 metal complex containing at least one cyclic
ligand containing delocalized π-electrons corresponding to the formula:

wherein,
M is titanium or zirconium in the +2, +3 or +4 formal oxidation state;
R3 in each occurrence independently is selected from the group
consisting of hydrogen, hydrocarbyl, silyl, germyl, cyano, halo and
combinations thereof, said R3 having up to 20 non-hydrogen atoms, or
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Application 10/468,978
adjacent R3 groups together form a divalent derivative thereby forming a
fused ring system,
each X is chlorine, hydride, or a hydrocarbyl hydrocarbyloxy, or
trihydrocarbylsilyl group, or a dihydrocarbylamino-, hydrocarbyleneamino-,
hydrocarbyloxy-, or trihydrocarbylsilyl- substituted derivative thereof, said
group or substituted group having up to 30 non-hydrogen atoms, or two X
groups together form a neutral C4-60 conjugated diene or a divalent derivative
thereof;
x is 1 or 2 selected to provide charge balance;
Y is -O-, -S-, -NR*-, -PR*-;
Z is SiR*2, CR*2, SiR*2SiR*2, CR*2R*2, CR*=CR*, CR*2SiR*2,
SnR*2, or GeR*2, wherein R* is hydrogen, or C1-10 hydrocarbyl;
and a cocatalyst therefor into said reactor; said steps a), b) and c)
occurring in any order, two together or all three simultaneously; and
d) withdrawing a polymer product from the reactor in the form of free
flowing polymer particles.
The Examiner relies upon the evidence in this reference (Ans. 2): 2
Muhle 5,672,666 Sep. 30, 1997
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1 through 14 and 16
through 18 as unpatentable over Muhle. App. Br. 3; Ans. 3.
Appellants argue the claims as a group. App. Br. 3. Thus, we decide
this appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
Issue
The dispositive issue in this appeal is whether Appellants have shown
that the evidence in Muhle does not support the Examiner’s conclusions of

2 We consider these documents: Appeal Brief filed March 29, 2007;
Examiner’s Answer mailed July 19, 2007; and Reply Brief filed September
14, 2007.
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Application 10/468,978
prima facie obviousness of the claimed process encompassed by claim 1.
Claim Interpretation
In order to consider the issue raised in this appeal, we first interpret
independent claim 1 by giving the terms thereof the broadest reasonable
interpretation in their ordinary usage in context as they would be understood
by one of ordinary skill in the art in light of the written description in the
Specification unless another meaning is intended by Appellants as
established therein, and without reading into the claim any disclosed
limitation or particular embodiment. See, e.g., In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007); In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited
therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We determine that claim 1 specifies, in pertinent part, a process for
producing elastomeric polymer particles in a gas phase polymerization
reaction comprising at least, among other things, the step of “introducing a
hindered phenol and a polymerization catalyst mixture,” wherein each of the
ingredients can be added in any amount. Appellants cite the Specification at
page 33, line 2, and original claim 15 for disclosure of including the
“hindered phenol” with the “polymerization catalyst mixture” in the same
step. App. Br. 2. We note that the “polymerization catalyst mixture” was
part of claim 1 as originally filed.
The disclosure at page 33, lines 1-5, of the Specification reads:
As an aid in obtaining increased diene conversion the presence
of a hindered phenol . . . in the reaction mixture is desirable.
The hindered phenol is desirable [sic] added along with any one
or all of the monomers, catalysts or other reagents, such as the
group 4 metal complex or activator added to the reactor.
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Application 10/468,978
Original claim 15 specifies “a hindered phenol is add to the reactor.”
We determine that the subject claim limitation does not specify that
the hindered phenol must be added in admixture with the polymerization
catalyst mixture or otherwise specify the order in which these two
ingredients are added when considered in light of the Specification. Indeed,
claim 1 specifies “steps a), b) and c) occurring in any order, two together or
all three simultaneously.” In this respect, the open-ended, transitional term
“comprising” opens claim 1 to encompass processes in which a major
amount of the hindered phenol can be added with the diene monomers
and/or the flow aid as well as separately from these materials. See, e.g.,
In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as one of the
monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”).
Accordingly, we determine that claim 1 encompasses processes in
which in step c), the polymerization catalyst mixture can be added first
followed by adding the hindered phenol.
Findings of Fact
We find Muhle would have disclosed to one of ordinary skill in this
art a process for transitioning between at least two incompatible catalysts or
catalyst systems during a polymerization process in a gas phase reactor
“without the need for halting the polymerization reaction, emptying the
reactor to rid it of the original catalyst system and restarting the
polymerization reaction with another catalyst system.” Muhle, e.g., abstract
and col. 2, ll. 5-43. There is no dispute that Muhle discloses reactors,
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Appeal 2008-5988
Application 10/468,978
monomers, reagents, catalysts, and process conditions that fall within claim
1. See generally App. Br., Ans., and Reply Br.
Muhle’s process includes, among other things, the steps of a)
discontinuing the introducing into the reactor of a first incompatible catalyst
or system; b) introducing a deactivating agent for the first incompatible
catalyst or system; c) purging remaining deactivating agent; and d)
introducing a second catalyst or system. Muhle, e.g., col., 2, ll. 16-24, and
col. 5, ll. 35-37. The polymerization within the reactor based on the first
catalyst or catalyst system is not immediately stopped by interrupting
introduction thereof, and thus, to substantially terminate and thus
substantially prevent these polymerization reactions within the reactor,
deactivating agents are employed. Muhle, e.g., col. 5, ll. 37-47, and col. 6,
ll. 15-20. The amount of deactivating agent must be sufficient to
substantially deactivate the first catalyst or catalyst system to the extent it
cannot reactivate itself. Muhle, col. 6, ll. 29-32. The deactivating agent can
be, among other things, “phenols” and there is no dispute that this term
encompasses the claimed “hindered phenol.” Muhle col. 5, ll. 53-57; see
Ans. 4-5; see generally App. Br. and Reply Br.
Discussion
We have reconsidered the record as a whole in light of Appellants’
contentions and are of the opinion that Appellants have not successfully
shown that the teachings of Muhle would not have disclosed a continuous
process for forming any self-adhesive article as claimed in claim 1, as we
interpreted this claim above, to one of ordinary skill in this art. See
generally App. Br. and Reply Br.
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Application 10/468,978
We are not persuaded otherwise by Appellants’ contention “[i]t would
not have been obvious to one of ordinary skill in the art to add a hindered
phenol into a gas phase polymerization process, to temporarily readjust the
polymerization” without terminating the polymerization reaction as taught
by Muhle. Reply Br. 3-4. Appealed claim 1 encompasses processes in
which in the third step, the polymerization catalyst mixture is added to the
reactor and then any amount of hindered phenol is added to the reactor. See
above pp. 4-5. Thus, in our view, Muhle teaches the claimed process to this
person, the difference between the reason for Muhle’s addition of the
deactivating agent and Appellants’ reason for addition of the hindered
phenol notwithstanding. See, e.g., In re Kronig, 539 F.2d 1300, 1304
(CCPA 1976) (The reference provides “ample motivation to add water in
order to increase product yields, and we do not view the rejection as
deficient merely because appellants allege a different advantage resulting
from the addition of water. Obviousness under 35 U.S.C. § 103 does not
require absolute predictability, and it is sufficient here that [the reference]
clearly suggests doing what appellants have done.” (citations omitted)).
Thus, Appellants’ contention that Muhle teaches away from the claimed
invention fails as well. Reply Br. 4. See, e.g., In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (a prior art disclosure does not teach away if the
“disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”).
Conclusion
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Muhle
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with Appellants’ countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by
appealed claims 1 through 14 and 16 through 18 would have been obvious as
a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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