Ex parte Brinen

Board of Patent Appeals and Interferences

Sep 17, 1999

08401514 (B.P.A.I. Sep. 17, 1999)

Application for patent filed March 10, 1995. According1
to appellant, this application is a continuation-in-part of
Application No. 08/174,498, filed December 28, 1993, now
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEFFREY L. BRINEN
__________
Appeal No. 97-2098
Application 08/401,5141
__________
ON BRIEF
__________
Before GARRIS, WARREN, and KRATZ, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-2098
Application No. 08/401,514
2
This is a decision on an appeal from the final rejection
of claims 1 through 10 and 12 through 16 which are all of the
claims remaining in the application.
The subject matter on appeal relates to a method for
prepolymerization of a supported catalyst system which
comprises prepolymerizing a highly active supported
metallocene catalyst system with olefin monomer feed in the
presence of hydrogen. Further details of this appealed
subject matter are set forth in representative independent
claim 1, the sole independent claim before us, which reads as
follows:
1. A method for prepolymerization of a supported catalyst
system comprising:
(a) combining:
(i) a supported metallocene catalyst system
having an activity greater than about 100,000
g/g/hr.;
(ii) at least one alpha olefin monomer feed; and
(iii) added hydrogen under prepolymerization
reaction conditions; and
(b) recovering a prepolymerized supported catalyst
system.
The reference relied upon by the examiner as evidence of
obviousness is:
Appeal No. 97-2098
Application No. 08/401,514
As correctly indicated on page 2 of the answer, the2
claims on appeal will stand or fall together; see 37 CFR §
1.192(c)(7)
(1995).
3
Tsutsui et al. 5,266,544 Nov. 30,
1993
(Tsutsui)
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Tsutsui.2
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the
appellant and the examiner concerning the above noted
rejection.
OPINION
For the reasons set forth in the answer and below, we
will sustain the rejection before us.
We agree with the examiner that the Tsutsui reference
evinces a prima facie case of obviousness with respect to a
method for prepolymerizing the catalyst systems disclosed
therein, including those having an activity within the here
claim range, with an olefin monomer feed and added hydrogen.
In support of his contrary view, the appellant argues that
“(1) Tsutsui discloses a vast number of metallocenes with no
Appeal No. 97-2098
Application No. 08/401,514
4
direction toward selecting those having high activity,
specifically greater than about 100,000 g/g/hr, for
prepolymerization with hydrogen; and (2) Tsutsui leads away
from selecting the metallocenes required by Applicant’s claims
[because] [i]n the examples,
Tsutsui uses only one type of metallocene, namely,
bis(methylcyclopentadienyl) zirconium dichloride” (brief, page
4). This argument is unpersuasive.
In the first place, we share the examiner’s view that
Tsutsui discloses in columns 7 and 8 a relatively limited list
of transition metal compounds which are zirconium-based as
preferred by patentee (e.g., see lines 59 through 62 in column
6) and which include those disclosed by the appellant
(according to the examiner’s undisputed finding in the
paragraph bridging pages 5 and 6 of the answer). Furthermore,
we perceive no logic in the appellant’s viewpoint that
Tsutsui’s exemplification of only one metallocene type somehow
leads away from the other metallocenes disclosed by patentee
including those having a high activity. We see no reason why
an artisan with ordinary skill would have attached any
Appeal No. 97-2098
Application No. 08/401,514
5
significance to the fact that Tsutsui’s examples utilize only
one type of metallocene.
Having determined that a prima facie case of obviousness
has been established, we must now begin anew our assessment of
the obviousness issue before us taking into account all
evidence of record for and against an obviousness conclusion.
See, for example, In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976).
As evidence of nonobviousness, the appellant points to
the examples in his specification which are said to evince
that the here claimed method yields the unexpected result of
inhibited reactor fouling and catalyst agglomeration.
However, even if such results are assumed to be unexpected,
the specification examples referred to by the appellant
plainly are evidentially inadequate to outweigh the reference
evidence adduced by the examiner. This is because the
examples under consideration (i.e., Examples 5 through 8)
involve only a single catalyst system having an activity of
360,000 g/g/hr. In contrast, the independent claim on appeal
is significantly broader in reciting “a supported metallocene
catalyst system having an activity greater than about 100,000
Appeal No. 97-2098
Application No. 08/401,514
6
g/g/hr.” Unquestionably, the appellant’s evidence of
nonobviousness is considerably more narrow in scope than the
argued claim on appeal.
It is well settled that evidence presented to rebut a
prima facie case of obviousness must be commensurate in scope
with the claims to which it pertains and that evidence which
is considerably more narrow in scope than the claimed subject
matter is not sufficient to rebut a prima facie case of
obviousness. In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805,
808 (CCPA 1979). Thus, even assuming that the specification
examples evince unexpected results as urged by the appellant,
it is clear that such evidence, being considerably more narrow
than the argued claim on appeal, is not sufficient to rebut or
outweigh the examiner’s reference evidence of prima facie
obviousness. It follows that we will sustain the examiner’s
section 103 rejection of claims 1 through 10 and 12 through 16
as being unpatentable over Tsutsui.
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 CFR § 1.136(a).
Appeal No. 97-2098
Application No. 08/401,514
7
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Charles F. Warren ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Peter F. Kratz )
Administrative Patent Judge )
tdc
Exxon Chemical Company
Law Technology
P.O. Box 2149
Baytown, TX 77522