Ex Parte Battiste

Board of Patent Appeals and Interferences

Aug 30, 2007

09705316 (B.P.A.I. Aug. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID R. BATTISTE
____________

Appeal 2007-0877
Application 09/705,316
Technology Center 1700
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Decided: August 31, 2007
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 5, 8 through 12, 30 through
33, and 35 through 37, all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “the use of Raman
spectrometry in processes for the oligomerization of olefin monomers and in
Appeal 2007-0877
Application 09/705,316

methods of monitoring and controlling processes for oligomerizating olefin
monomers” (Specification 1, ll. 14-16). Further details of the appealed
subject matter are recited in representative claims 1 and 30 reproduced
below:
1. A process for olefin oligomerization in a reactor, the process
comprising:

providing a reaction mixture in the reactor, the reaction mixture
comprising:

at least one reactant comprising at least one olefin
monomer and optionally hydrogen; and

a catalyst system suitable for the oligomerization of olefin
monomers;

contacting the olefin monomer and the catalyst system in a
reaction zone;

monitoring an olefin oligomerization reaction by using
low-resolution Raman spectrometry equipment to provide an
output signal representative of one or more chemical
components of the reaction; and

recovering an oligomer.

30. A trimerization process, the process comprising:

monitoring a trimerization reaction by using Raman
spectrometry equipment,

wherein the Raman spectrometry equipment comprises low
resolution Raman spectrometry equipment; and

recovering 1-hexene from the trimerization reaction.

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As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:
Alsmeyer US 5,638,172 Jun. 10, 1997
Lashier US 5,689,028 Nov. 18, 1997
Tanaka US 5,750,817 May 12, 1998

As evidence of nonobviousness of the claimed subject matter, the
Appellant has supplied the following evidence:
Lam, Raman Technology for Today’s Spectroscoplasts, “A New Era in
Affordable Raman Spectroscopy,” 30-37 (Jun. 2004).

The Examiner has rejected the claims on appeal as follows:
1) Claims 1 through 5, 8 through 11, 30 through 33, 35, and 36
under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Lashier and Alsmeyer; and
2) Claims 12 and 37 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Lashier, Alsmeyer, and Tanaka.
The Appellant appeals from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).
ISSUE
Would a person having ordinary skill in the art have been led to
employ low–resolution Raman spectrometry equipment to monitor an olefin
oligomerization reaction to “provide an output signal representative of one
or more chemical components of the reaction” required by the claims on
appeal within the meaning of 35 U.S.C. § 103(a)?

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Application 09/705,316

PRINCIPLES OF LAW
1. CLAIM INTERPRETATION
During prosecution of the application, the Examiner “applies to the
verbiage of the claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art.” In re Morris, 127 F.3d 1048, 1054-056, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997).
2. OBVIOUSNESS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., unexpected
results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18,
148 USPQ 459, 467(1966). “[A]nalysis [of whether the subject matter of a
claim is obvious] need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41,
82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336-337 (Fed. Cir. 2006); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361,
80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found
in the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
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Application 09/705,316

545, 549 (CCPA 1969)(“Having established that this knowledge was in the
art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”). The common knowledge generally available to
a person having ordinary skill in the art includes the Appellant's admission
regarding what was known in the art at the time of the invention. See In re
Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611-12 (CCPA 1975)(the
admitted prior art in the an applicant’s Specification may be used in
determining the patentability of a claimed invention); see also In re Davis,
305 F.2d 501, 503, 134 USPQ 256, 258 (CCPA 1962).

FACTS AND ANALYSES
The Appellants have not challenged the Examiner’s determination that
it is well within the ambit of one of ordinary skill in the art to carry out
Lashier’s olefin oligomerization process in a series of reactors as taught by
Tanaka. Nor have the Appellants challenged the Examiner’s finding that
Lashier’s olefin oligomerization (polymerization) process is identical to the
claimed olefin oligomerization process, except for employing the claimed
low-resolution Raman spectrometry equipment to “provide an output signal
representative of one or more chemical components of the reaction” as
recited in claim 1.
Therefore, the dispositive question is whether one of ordinary skill in
the art would have been led to employ the claimed low-resolution Raman
spectrometry equipment to monitor the olefin oligomerization process of the
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type discussed in Lashier to provide “an output signal representative of one
or more chemical components of the reaction” as required by the claims on
appeal. On this record, we answer this question in the affirmative.
The Examiner has found, and the Appellant has not disputed, that
Lashier teaches a need for monitoring its polymerization (oligomerization)
process for conversion, selectivity and/or products. (Compare Answer 3,
with Br. and Reply Br. in their entirety). The Appellant also has not
challenged the Examiner’s finding at page 3 of the Answer that it was well
known to one of ordinary skill in the art that:
All of the conversion, selectivity and the amount polymer
must be decided by measured amounts of components in the
reaction. Once, [sic.] measured parameters are not desired
ones, one having ordinary skill in the art would adjust the
process[,] such as by changing the input and the output of the
reactants, the catalyst and/or polymer product to/from the
reactor. [See Br. and Reply Br. in their entirety.]

The Examiner has acknowledged that Lashier does not mention the claimed
low-resolution Raman spectrometry equipment.
However, Lashier, by virtue of not specifically describing any
particular monitoring device, implies that any conventional polymerization
monitoring device may be used to monitor Lashier’s oligomerization
(polymerization) process. The Examiner has correctly found at page 3 of
the Answer that:
Alsmeyer discloses that chemical processes such as poly-
merization can be monitored in-situ by Raman spectrometry
(the abstract; col. 1. lines 44-60)….
….
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Application 09/705,316

…. Alsmeyer discloses that the Raman spectrometry has a lots
of advantages for monitoring chemical processes (col. 1, lines
22-27; col. 2, lines 47-51; col. 3, lines 15-30 and 59-67)….

The Examiner has also correctly found at page 6 of the Answer that the
Raman spectrometry equipment taught by Alsmeyer is inclusive of both low
and high resolution Raman spectrometry equipment (not limited to one or
the other type of Raman spectrometry equipment). The Appellant has also
acknowledged that low cost and suitable low-resolution Raman spectrometry
equipment, such as R-2000 and R-2001c manufactured by Ocean Optics,
Inc. and Boston Advanced Technologies, Inc., are known be commercially
available (Specification 9).
Given the above knowledge, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ Raman spectrometry
equipment, especially commercially available low cost, suitable low-
resolution Raman spectrometry equipment, to monitor Lashier’s
oligomerization process as suggested by Alsmeyer. KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. at 1742, 82 USPQ2d at 1397(“When there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.”)
The Lam article relied upon by the Appellant also supports this position. It
can be inferred from the Lam article that it is well within the ambit of one of
ordinary to select appropriate high or low resolution Raman spectrometry
equipment for given chemicals based on the cost and performance of the
commercially available equipment.
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The Appellant contends that one of ordinary skill in the art would
have been discouraged from employing low-resolution Raman spectrometry
equipment due to the closeness of the spectral peaks of the ethylene
monomer and the 1-hexene product (e.g., Br. 6-15). In support of this
contention, the Appellant refers to statements at pages 4 and 15 of the
Specification (Br. 10 and Reply Br. 4). However, the Appellant's contention
is unpersuasive for at least two reasons. First, both the claims on appeal and
Lashier are not limited to producing the 1-hexene product from the ethylene
monomer. They both include olefin oligomerization processes involving
reactants and products different than ethylene monomer and 1-hexene,
respectively. Yet, there is no indication that the commercially available low-
resolution Raman spectrometry equipment is not useful for olefin
oligomerization processes involving those different reactants and products
not mentioned at pages 4 and 15 of the Specification. Second, the Appellant
has not proffered any objective evidence to support the statements at pages 4
and 15 of the Specification. In re De Blauwe, 736 F.2d 699, 705, 222 USPQ
191, 196 (Fed. Cir. 1984). The Appellant has not relied on any objective
evidence, including the Lam article, to support the statements in the
Specification.
Accordingly, for the reasons set forth in the Answer and above, we
determine that the preponderance of evidence weighs most heavily in favor
of obviousness within the meaning of 35 U.S.C. § 103(a). Hence, we affirm
the decision of the Examiner rejecting the claims on appeal under under
35 U.S.C. § 103(a).

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Application 09/705,316

ORDER
The decision of the Examiner 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).
AFFIRMED

cam

MICHAEL G. FLETCHER
FLETCHER YODER
P.O. BOX 692289
HOUSTON TX 77269-2289

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