Ex Parte BIAN

Board of Patent Appeals and Interferences

Jul 25, 2002

08851742 (B.P.A.I. Jul. 25, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JIANG BIAN
__________

Appeal No. 1999-1679
Application No. 08/851,742
____________
HEARD: JULY 11, 2002
____________

Before OWENS, LIEBERMAN, and PAWLIKOWSKI, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 20, 22 and 23, which are all the claims pending in this
application. Claim 21 has been canceled.
THE INVENTION
The invention is directed to a process for the manufacture of polyethylene
homopolymers or copolymers of ethylene containing at least 90 mol.% of ethylene. It is
Appeal No. 1999-1679
Application No. 08/851,742
2
required that the initial preparation of the polymerization catalyst be in the absence of an
electron donor. Subsequent to the first step of catalytic preparation an electron donor is
utilized provided that electron donors which are alcohols, phenols, silanes and polysiloxanes
are excluded from among those utilized in the preparation of said polymerization catalysts.
Additional limitations are described in the following illustrative claim.
THE CLAIM
Claim 1 is illustrative of appellant’s invention and is reproduced below:
1. A process for the manufacture of ethylene homopolymers and
copolymers containing at least 90 mol% of ethylene, according to which ethylene in
a polymerization medium is placed in contact with a catalytic system comprising:
a) a solid catalytic complex based on magnesium, on transition metal and
on halogen, the said catalytic complex being prepared by reacting, in
a first step, in the absence of an electron donor, at least one
magnesium compound chosen from oxygen-containing organic
magnesium compounds and halogen-containing magnesium
compounds with at least one compound of a transition metal from
group IVB or VB of the Periodic Table chosen from oxygen-
containing organic compounds and halogen-containing compounds of
a transition metal, until a liquid complex is obtained, and, in a
subsequent step, by precipitating the said liquid complex using a
halogen-containing organoaluminum compound of general formula
A1RnX3-n in which R is a hydrocarbon radical, X is a halogen and n is
less than 3, in order to collect a solid catalytic complex,
b) an organometallic compound of a metal from groups IA, IIA, IIB,
IIIA and IVA of the Periodic Table, and
c) at least one electron donor selected from the group consisting of
organic compounds containing at least one atom or at least one group
of atoms having at least one pair of free electrons, with the exception
of alcohols, phenols, silanes, and polysiloxanes, said at least one
Appeal No. 1999-1679
Application No. 08/851,742
3
electron donor used after the first step in the preparation of a liquid
complex leading to the solid catalytic complex.
Appeal No. 1999-1679
Application No. 08/851,742
4
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Zucchini et al. (Zucchini) 4,305,840 Dec. 15, 1981
Cowan et al. (Cowan) 4,588,703 May 13, 1986
Collomb-Ceccarini et al. (Collomb-Ceccarini) 4,921,920 May 1, 1990
Job 5,122,494 Jun. 16, 1992
Cuffiana et al. (Cuffiana) 5,278,118 Jan. 11, 1994
Scata et al. (Scata) 1 539 175 Jan. 31, 1979
(published Great Britain Patent Application)
THE REJECTIONS
Claims 1, 3, 5 through 18, 20, 22 and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Scata in view of Job.
Claims 1 through 8, 10 through 20, 22 and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cuffiana in view of Zucchini, Cowan and Collomb-
Ceccarini.
OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner, and agree with the appellant that the rejections of each of the claims are not
well founded. Accordingly, we reverse these rejections.
The Rejection Under Section 103(a)
"[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability." See In re Oetiker, 977
Appeal No. 1999-1679
Application No. 08/851,742
5
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The Rejection Over Scata in View of Job
It is the examiner’s position that,
[i]t would be obvious to use the process of Scata to homopolymerize ethylene or
for the copolymerization of ethylene and alpha-olefins to form copolymers having at
least 90 mole percent ethylene because (1) any Ziegler-type catalyst that will
polymerize alpha-olefins of 3 carbon atoms or more will inherently polymerize
ethylene, (2) the catalyst of Scata is described as forming copolymers of ethylene
and alpha-olefins i.e., it obviously can polymerize ethylene, (3) Job teaches that
another high activity magnesium halide supported titanium containing Ziegler-type
catalyst containing an electron donor may be used to homopolymerize ethylene or
propylene (column 2, line 63 to column 3, line 16, lines 28-31; column 6, lines
9-34) and (4) one of ordinary skill in the art would believe that the catalyst of
Scata would be suitable for polymerizing ethylene under the claimed conditions.
See Answer, pages 3 and 4. We disagree.
We find that Scata states that, “[t]he invention relates to the polymerisation of
alpha-olefins having at least three carbon atoms, using catalysts containing titanium
magnesium, aluminum and halogen.” See page 1, left-hand column, lines 10-14. We
further find that Scata discloses that, “[t]he alpha-olefins polymerized include propylene,
butene-1 and 4-methylpentene-1. Propylene and higher olefins may be copolymerized
with one another and/or with lower amounts of ethylene.” See page 2, right-hand
column, lines 83-87. We conclude that there is no suggestion or motivation to
homopolymerize ethylene or form a copolymer of ethylene having at least 90 mol.%
ethylene based on the teachings of Scata.
In contrast, Job is directed to the production of polymers and copolymers of lower
Appeal No. 1999-1679
Application No. 08/851,742
6
alpha-olefins, particularly propylene and ethylene. See column 1, lines 11-12. We find
however, that the olefin polymerization catalyst is prepared by contacting the solid reaction
product of a magnesium alkoxide, a titanium tetraalkoxide and a phenolic compound. See
column 2, lines 65-66 column 3,lines 14-19, 34-37, 59-61, column 4, lines 8-10, 21-
23 and 30-33. We conclude therefrom that a phenolic compound is required in the
formation of the polymerization catalyst, which phenolic compound is precluded from the
claimed subject matter. Accordingly, it would have been improper for the person of
ordinary skill in the art to have combined the teachings of Job with Scata to suggest to one
of ordinary skill in the art to homopolymerize ethylene or copolymerize at least 90 mol. %
ethylene using the disclosure of Scata, when the claimed subject matter precludes both the
presence of any electron donor in the initial formation of the catalyst and the presence of a
phenol at any step of the preparation of a catalyst.
Based upon the above findings and analysis, we conclude that the examiner has
failed to establish a prima facie case of obviousness. In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best defense against the subtle
but powerful attraction of a hindsight-based obviousness analysis is rigorous application of
the requirement for a showing of the teaching or motivation to combine prior art
references").
The Rejection Over Cuffiana in view of Zucchini, Cowan and Collomb-Ceccarini
The reference to Cuffiana is directed to a catalytic system capable of producing
Appeal No. 1999-1679
Application No. 08/851,742
7
olefinic elastomers. See column 1, lines 41-49. The copolymers produced are
copolymers of ethylene with alpha olefins or copolymers of ethylene alpha olefins and at
least one diene. See claim 1. We find that the proportion of bonded propylene
exemplified ranges from 35.2%, Example 13 to 55%, Example 11. We determine that
there is no suggestion or teaching that ethylene may be homopolymerized or
copolymerized utilizing at least 90 mol.% ethylene as required by the claimed subject
matter. This is in accord with the examiners conclusion. See Answer, page 7.
As with the prior rejection, it is the examiner’s position that, “it would be obvious
to use the catalyst of Cuffiana to form the claimed ethylene polymers because it is well
known in this art that Ziegler-type catalysts having a titanium-magnesium-halogen solid
component and an aluminum alkyl activator normally may be used to form ethylene
elastomers or the claimed ethylene homo or copolymers.” See Answer, paragraph
bridging pages 7 and 8. We again disagree. The evidence submitted by the examiner fails
to support this conclusion.
Collomb-Ceccarini is directed to the production of polyolefins by polymerization or
copolymerization of alpha-olefins. See column 1, lines 10-12. The alpha olefins
comprise 2 to 8 carbon atoms. See column 3, lines 17-19. The examiner however has
offered no reason to combine this reference with Cuffiana. To the contrary, the examiner
has explicitly stated that, “Collomb-Ceccarini . . . is not really needed in this rejection.”
See Answer, page 9.
Appeal No. 1999-1679
Application No. 08/851,742
8
Zucchini is relied upon only for its disclosure of ethyl benzoate as an electron
donor. See Answer, page 8. Zucchini however, is likewise directed to copolymers having
only minor amounts of ethylene. See column 3, lines 18-32.
Furthermore, the examiner relies upon Cowan to disclose ethyl benzoate,
appellant’s preferred electron donor, but admits that Cowan, “does use an alcohol during
the reaction of the magnesium chloride and titanium alkoxides.” See Answer, page 8.
Based upon the above findings, we conclude on this record that the examiner has failed to
establish a prima facie case of obviousness with respect to the claimed subject matter.
Based upon the above analysis, we have determined that the examiner's legal
conclusion of obviousness is not supported by the facts. "Where the legal conclusion [of
obviousness] is not supported by [the] facts[,] it cannot stand." In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), reh’g denied, 390 U.S. 1000 (1968).
DECISION
The rejection of claims 1, 3, 5 through 18, 20, 22 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Scata in view of Job is reversed.
Appeal No. 1999-1679
Application No. 08/851,742
9
The rejection of claims 1 through 8, 10 through 20, 22 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Cuffiana in view of Zucchini, Cowan and Collomb-
Ceccarini is reversed.
The decision of the examiner is reversed.

REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
PL:hh
Appeal No. 1999-1679
Application No. 08/851,742
10
VENABLE, BAETJER, HOWARD AND CIVILETTI, LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998