Ex Parte Baxter et al

Board of Patent Appeals and Interferences

Nov 5, 2008

10962920 (B.P.A.I. Nov. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EDWARD C. BAXTER, JR., GILBERT VALDEZ,
CHRISTOPHER LOBUE, TIMOTHY LOWRY and ARMEN
ABAZAJIAN
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Appeal 2008-2498
Application 10/962,920
Technology Center 1700
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Decided: November 5, 2008
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Before and LINDA M. GAUDETTE, PETER F. KRATZ,
CHUNG K. PAK Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7, 10-21, and
24-34. (App. Br. 2, ¶ III.) Claims 8 and 9 are also pending and are objected
to as being dependent on a rejected base claim. (Final Office Action, mailed
May 24, 2006, p. 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-2498
Application 10/962,920

STATEMENT OF THE CASE
The invention is said to relate “to a novel liquid phase process for the
polymerization of olefins using a modified BF3 catalyst which is stabilized
with a complexing agent.” (Spec. 1, Field of the Invention.) Claim 1 is
illustrative of the invention and is reproduced below:
1. A single-stage liquid phase polymerization process for
preparing a polyolefin product having preselected properties, said process
comprising:
proving a liquid feedstock comprising at least one olefinic
component;
proving a catalyst composition comprising a complex of BF3
and a complexing agent therefor, said complexing agent comprising a glycol
or an aliphatic alcohol having a primary hydroxyl group and no hydrogen on
a beta carbon, said complex being stable at temperatures needed to produce
said polyolefin product;
introducing said feedstock and said catalyst composition into a
residual reaction mixture in a loop reaction zone;
recirculating the residual reaction mixture with the feedstock
and the catalyst composition therein in said zone at a recirculation rate
sufficient to cause intimate intermixing of the residual reaction mixture, the
feedstock and the catalyst composition to thereby present a recirculating,
intimately intermixed reaction admixture of the residual reaction mixture,
the feedstock and the catalyst composition in said reaction zone;
maintaining the recirculating intimately intermixed reaction
admixture in its intimately intermixed condition and removing heat of
reaction from the reaction admixture at a rate calculated to provide a
substantially constant reaction temperature in the reaction admixture while
the reaction admixture is recirculating in said reaction zone, said constant
reaction temperature being at a level appropriate for causing olefinic
components introduced in said feedstock to undergo polymerization to form
said polyolefin product in the presence of said catalyst composition;
withdrawing a product stream comprising polyolefin product
and catalyst composition from said reaction zone; and
controlling the introduction of said feedstock into said reaction
zone and the withdrawal of said product stream from the reaction zone such
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Application 10/962,920

that the residence time of olefinic components undergoing polymerization in
the reaction zone is appropriate for production of said polyolefin product.

The Examiner relies on the following prior art references to show
unpatentability:
Rath 5,556,932 Sep. 17, 1996
Kao 5.977,251 Nov. 2, 1999
Rath 5,286,823 Feb. 15, 1994
Appellants request review of the following grounds of rejection (App.
Br. 2, ¶ III):
1. claims 1, 3-7, 10-13, 15-18, 20, 26-32, and 34 under 35 U.S.C. §
103(a) as unpatentable over Rath ’932;
2. claims 2, 14, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Rath ’932 in view of Kao; and
3. claims 19, 21, and 33 under 35 U.S.C. § 103(a) as unpatentable
over Rath ’932 in view of Rath ’823.
Appellants confine their arguments to independent claim 1, the sole
independent claim on appeal, and Rath ’932. Appellants contend that the
Examiner failed to establish a prima facie case of obviousness as to
independent claim 1. More specifically, Appellants maintain that the
Examiner failed to properly establish motivation to select a complexing
agent as claimed from “among the multiplicity of potential prospects
proposed as potentially suitable complexing agents by Rath [’932].” (App.
Br. 5.) The Examiner disagrees, arguing that Rath ’932 discloses a
preference for a limited number of alcohols, including methanol which
meets the limitation of Appellants’ claimed complexing agent. (Ans. 7.)
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Application 10/962,920

ISSUE
Based on the contentions of the Examiner and Appellants, the issue
presented in this Appeal is: have Appellants shown that the Examiner
reversibly erred in determining that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have selected a
complex of boron trifluoride and methanol for use as the catalyst in the Rath
’932 polymerization process to thereby achieve Appellants’ invention as
claimed in claim 1? We answer this question in the negative.
FINDINGS OF FACT
Rath ’932 discloses a polymerization process for preparing
isobutene/diene copolymers. (Title.) Rath ’932 states that “polymerization
[is] effected with boron trifluoride in the presence of an alcohol and the
presence or absence of hydrogen fluoride.” (Col. 2, ll. 61-63.) Rath ’932
specifies that “[i]n the boron trifluoride/alcohol catalysts to be used
according to the invention the boron trifluoride is present not as discrete
boron trifluoride molecules but as a boron trifluoride/alcohol complex.”
(Col. 3, ll. 1-4.) According to Rath ’932,
The alcohols which may be employed in the catalyst
system used according to the invention are primary and
secondary C1- C15 alcohols, for example methanol, ethanol, n-
propanol, isopropanol, n-butanol, 2-butanol, isobutanol and
primary and secondary pentanols, hexanols, heptanols,
octanols, nonanols, decanols, undecanols, dodecanols,
tridecanols, tetradecanols and pentadecanols. The use of higher
alcohols is also possible but, particularly because of their higher
price, generally results in no additional economic advantages.

(Col. 3, l. 62-col. 4, l. 4.)

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Appeal 2008-2498
Application 10/962,920

PRINCIPLES OF LAW
“[A] reasonable expectation of success, not absolute predictability”
supports a conclusion of obviousness. In re Longi, 759 F.2d 887, 897 (Fed.
Cir. 1985). Therefore, an obviousness rejection predicated on selection of
one or more components from numerous possible choices may be
appropriate if the prior art provides direction as to which of many possible
choices is likely to be successful. See PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1364 (Fed Cir. 2007); In re O'Farrell, 853
F.2d 894, 903 (Fed.Cir.1988) (An invention is “obvious to try” “where the
prior art [gives] either no indication of which parameters [are] critical or no
direction as to which of many possible choices is likely to be successful.”);
In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972) (noting that “picking and
choosing may be entirely proper in the making of a 103, obviousness
rejection, where the applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may arise from the
similarity of the subject matter which he claims to the prior art”). Moreover,
the fact that a reference “discloses a multitude of effective combinations
does not render any particular formulation less obvious.” Merck & Co., Inc.
v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (citing In re Corkill,
771 F.2d 1496, 1500 (Fed.Cir.1985) (obviousness rejection of claims
affirmed in light of prior art teaching that “hydrated zeolites will work” in
detergent formulations, even though “the inventors selected the zeolites of
the claims from among ‘thousands' of compounds”)); see also, In re Susi,
440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the
disclosure of the prior art was “huge, but it undeniably include[d] at least
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Application 10/962,920

some of the compounds recited in appellant's generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant's additives”).
ANALYSIS
As noted by the Examiner, Appellants “do [] not dispute the fact that
methanol is a primary alcohol and that it has no hydrogen on a beta carbon
(because it lacks a beta carbon), and that is [sic, it] adequately satisfies the
structural features recited in the instant claims.” (Ans. 7 (noting that claim 7
recites the use of methanol as the complexant).) Rather, Appellants’
traversal of the Examiner’s obviousness rejection is limited to their
contention that it would not have been obvious to have selected methanol
from among the alcohols identified in Rath ‘932 for use in the catalyst
complexing agent.
We are not persuaded by Appellants’ argument. Rather, we find the
Examiner’s obviousness determination is consistent with the relevant case
law. In particular, the Examiner provided a reasonable basis to conclude
that one of ordinary skill in the art at the time of the invention would have
been motivated to select BF3·CH3OH as the complexing agent in the Rath
’932 process given Rath’s stated preference for a limited number of alcohols
and specific recitation of methanol as a suitable alcohol (see Findings of
Fact, supra). (See Ans. 3-4 and 6-7.) Appellants have not presented
persuasive evidence to establish the contrary.1

1 As noted by the Examiner (Ans. 7), Appellants’ general statements
regarding the nonobviousness of the invention (see, e.g., Reply Br. 2) do not
constitute the type of persuasive arguments or evidence required to
overcome a prima facie case of obviousness. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
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Therefore, we adopt the facts and reasons relied on by the Examiner
in sustaining the rejection of claims 1, 3-7, 10-13, 15-18, 20, 26-32, and 34
under 35 U.S.C. § 103(a) as unpatentable over Rath ’932. Appellants do not
present any additional arguments with respect to the remaining two grounds
of rejection, but rely solely on the arguments presented in connection with
the first ground of rejection. (App. Br. 5-6; Ans. 7, last paragraph; Reply Br.
2.) Accordingly, we likewise sustain the rejection of claims 2, 14, 24, and
25 under 35 U.S.C. § 103(a) as unpatentable over Rath ’932 in view of Kao
and the rejection of claims 19, 21, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Rath ’932 in view of Rath ’823 for the reasons stated in
the Examiner’s Answer (see Ans. 5-6.)
CONCLUSION OF LAW
On the record before us, Appellants have not shown reversible error in
the Examiner’s determination that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have selected a
complex of boron trifluoride and methanol for use as the catalyst in the Rath
‘932 polymerization process to thereby achieve Appellants’ invention as
claimed in claim 1.
DECISION
The decision of the Examiner rejecting claims 1-7, 10-21, and 24-34
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).
the specification does not suffice.”); In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972) (burden of analyzing and explaining data to support an
argument of unexpected results rests on party asserting it).
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Application 10/962,920

AFFIRMED

tc

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