Ex Parte Banat et al

Patent Trial and Appeal Board

Sep 28, 2016

11884653 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111884,653 01127/2009
23117 7590 09/30/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Yahya Ahmad Banat
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.
LCM-4702-77 6326
EXAMINER
TESKIN, FRED M
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y AHY A AHMAD BANAT, JEAN-RICHARD LLINAS,
SERGIO MASTROIANNI, GUNTER WEICKERT, and
JOELLE MARIE-LOUISE COLLOMB 1
Appeal2015-003015
Application 11/884,653
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER L. OGDEN, and
AVEL YN M. ROSS, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 21, 24-26, 28-30, 32, and 33 in the above-
identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Ineos Sales UK
Limited. Br. 2.
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Application 11/884,653
BACKGROUND
Appellants' invention relates to "transition metal catalysts providing
advantages for operation in gas phase processes for the polymerization of
ethylene or the copolymerization of ethylene and a-olefins." Spec. 1. Claim
21, the sole independent claim on appeal, is representative:
21. A process for polymerising ethylene or copolymerising
ethylene and one or more alpha-olefins comprising:
(1) in a first stage prepolymerising ethylene or ethylene and
one or more alpha-olefins at a temperature in the range 70°C to
100°C in the presence of a catalyst system comprising (a) a
transition metal compound which is a monocyclopentadienyl
metallocene complex, (b) a non-aluminoxane activator and ( c)
an inorganic metal oxide support,
(2) optionally, recovering the prepolymerised catalyst, and
(3) in a second stage polymerising ethylene or ethylene and
one or more alpha-olefins at a temperature in the range 80°C to
90°C in the presence of said prepolymerised catalyst, wherein
the first and second stage are performed in the gas phase.
Br. 12 (emphasis added).
The Examiner maintains the following grounds of rejection2 :
I. Claim 33 is rejected under 35 U.S.C. § 112 para. 4 as failing to
further limit the subject matter of claim 21 from which it depends. Final
Action 3-4; Answer 7.
II. Claims 21, 24-26, 28, 29, 32, and 33 are rejected under
35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
US 6,437,060 Bl (issued Aug. 20, 2002) [hereinafter Maddox]. Final
Action 5-7.
2 The Examiner has withdrawn a rejection of claim 29 under 35 U.S.C. § 112
para. 2. See Answer 6-7; see also Final Action 2-3.
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Application 11/884,653
III. Claim 30 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maddox, and further in view of Int'l Application
Publication No. WO 96/28480 (published Sept. 19, 1996) [Jacobsen]. Final
Action 8.
Appellants argue the claims as a group with respect to rejection II, and
responds to rejection III based on the same arguments. See Br. 7-10.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion regarding rejections II and III to independent
claim 21, and all other claims stand or fall together with claim 21.
DISCUSSION
Rejection I
Claim 33 recites "[a] process according to claim 21 wherein the
prepolymer is prepared by contact of the catalyst components with
ethylene." Br. 14. The Examiner finds that parent claim 21 "already
requires the presence of ethylene," thus, the Examiner concludes that claim
33 is not a proper dependent claim. Final Action 3--4.
Appellants argue that claim 33 is proper because "claim 21 requires
the step of prepolymerising 'ethylene or ethylene and one or more alpha-
olefins, "' and that "[ c ]laim 33 simply points to the alternative of employing
ethylene." Br. 7. In response to this argument, the Examiner determines
that claim 33 "does not exclude contacting the catalyst components with
ethylene and one or more alpha-olefins." Answer 7. We agree with the
Examiner's interpretation of claim 33, and therefore we are not persuaded of
reversible error in the Examiner's decision to reject claim 33 under 35
U.S.C. § 112 para. 4.
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Application 11/884,653
Rejections II and III
The Examiner finds that Maddox teaches the limitations of
independent claim 21, except that Maddox "is silent with respect to the first
stage temperature being in the range of 70 to 100 °C." Final Action 5.
However, the Examiner finds that Maddox "teaches prepolymerizing in the
range of 20 to 70°C," which touches the range required by claim 21. Id.
(citing Maddox 12:62-64). Thus, the Examiner concludes that "[i]t would
have been obvious to one of ordinary skill in the art at the time the invention
was made to arrive at contacting the catalyst component in a range of 70°C
to 100°C since Maddox et al. teaches prepolymerizing at a temperature of 20
to 70°C." Id. at 6 (citing In re Wertheim, 541 F.2d257 (CCPA 1976); In re
Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)).
While Appellants acknowledge that Maddox teaches a temperature
range of 20-70 °C, Appellants argue that "Maddox prefers the use of lower
temperatures in the polymerization step," and exemplifies only temperatures
less than or equal to 40 °C. Br. 7-8. Appellants further argue that "the aims
of Maddox are to perform the prepolymerisation step at a temperature lower
than the final polymerization temperature." Id. at 9 (citing Maddox, col. 3).
We do not find this argument persuasive of reversible error, because
Appellants have not pointed to factual evidence that the preferred ranges or
the examples disclosed in Maddox teach away from the alternative of using
temperatures of70 °C or higher. See In re Fulton, 391F.3d1195, 1201
(Fed. Cir. 2004) ("The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed .... ").
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Application 11/884,653
Appellants also argue that
under the conditions of the Maddox examples, namely,
prepolymerisation at lower temperatures for example 30°C in
the absence of hydrogen, the resultant homopolymers would
have been expected to have a different molecular weight than
the homopolymers prepared during the prepolymerisation of the
presently claimed invention due to the higher temperatures
employed (70°C to 100°C).
Br. 8. However, because Appellants do not support this argument by
pointing to factual evidence on this appeal record, we find the argument
unpersuasive of reversible error. See In re Schulze, 346 F .2d 600, 602
(CCPA 1965) ("Argument in the brief does not take the place of evidence in
the record.")
In addition, Appellants argue that use of temperatures within the range
of 70 to 100 °C leads to unexpected results because of "improved activities
and improved powder morphology with a strong decrease in the fine
particles in the final polymers." Br. 8. As evidence of this, Appellants point
to Table 2 of the Specification, which is reproduced below:
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Application 11/884,653
Spec. 16. Table 2 presents data for runs 6-15, which includes pre-
polymerization temperature, polymerization temperature, polymerization
ethylene pressure, yield, average particle size, and fines content. .LA1ppellants
argue that "the top three polymer yields are runs 10, 14 and 15," and "[t]hese
examples also show the lowest fines content." Br. 9. On the other hand,
Appellants argue that run 11, which is outside the scope of claim 21,
shows the poorer yield and higher fines content observed when
performing the prepolymerisation at the lower temperature of
60°C. It is therefore surprising that, in going from 60°C[] to
70°C[], the yields are increased and the fines contents are
reduced (see runs 10, 14 and 15). This result is not obvious in
light of the Maddox disclosure.
Br. 10.
Having carefully considered Appellants' arguments and evidence, we
do not find the evidence persuasive of unexpected results. As the Examiner
correctly points out, see Answer 9-10, Table 2 shows that when the
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polymerization temperature is 90°C, the fines content increases with
increasing prepolymerization temperature above 70 °C, such that at 90 °C,
the fines content of 23.02 wt.% is nearly as high as the fines content of 25.37
wt.% in run 11. See Answer 9-10. We find no reversible error in the
Examiner's unrebutted3 conclusion that "a prepolymerization temperature of
100 °C, which is within the claimed range, would show a fines content of
even higher than 23.02." Id. at 10.
As the Examiner also correctly notes, Table 2 does not show results
"for when the prepolymerization temperature is higher than the
polymerization temperature," such as when the prepolymerization
temperature is 100°C and the polymerization temperature is 90 °C. Id.
Thus, Appellants have not pointed to evidence of unexpected results
commensurate with the full range of temperature conditions specified in
claim 21. See In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980).
We also note that the Specification states that "Runs 14 and 15
compared to run 10 clearly show that pre-polymerisation at 70°C followed
by polymerisation at 90°C and high ethylene pressure (15 and 20 bar) result
in a strong decrease of fines particles in the polymer." Spec. 16. Table 2
also shows that average particle size increases from 408 to 456 µmas
pressure increases from 10 to 20 bar. However, Appellants have not
provided any comparative data showing the result of increased ethylene
pressure when the prepolymerization temperature is less than 70 °C. Thus,
Appellants have not shown that the alleged beneficial results would not have
3 Because Appellants did not submit a Reply Brief, the Examiner's findings
and conclusion set forth in the Answer stand uncontested.
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been obtained based on the disclosure of Maddox, the closest prior art.4 See
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.").
Therefore, by a preponderance of the evidence on this appeal record,
we are not persuaded that the Examiner reversibly erred in deciding to reject
claim 1. For the same reasons, we find no reversible error in the Examiner's
decision to reject claims 24-26, 28-30, 32, and 33, which depend from
claim 21.
DECISION
The 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. § l .136(a)(l )(iv).
AFFIRl'viED
4 According to Maddox, "[i]n the final polymerization state the pressure
is ... typically in the range 5 to 20 bar." Maddox 3:18-20.
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