Ex Parte Burkhardt et al

Board of Patent Appeals and Interferences

Jun 7, 2010

10062389 (B.P.A.I. Jun. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRY J. BURKHARDT, UDO M. STEHLING,
JAMES R. HART, WILLIAM T. HAYGOOD, JR.,
ROBERT T. LI, JAMES C. VIZZINI, and MATTHEW C. KUCHTA
____________

Appeal 2009-003470
Application 10/062,389
Technology Center 1700
____________

Decided: June 7, 2010
____________

Before MICHAEL P. COLAIANNI, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 11-33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Appellants describe their invention as “metallocene compositions
capable of providing propylene polymer having high melting point
molecular weight” (e.g., Spec. 2, l. 31 to Spec. 3, l. 10).
Claim 11, drawn to a polymer prepared using a metallocene catalyst,
is reproduced below (the formula therein represents a metallocene catalyst):
11. A propylene polymer comprising silica and having a
melting point of at least 160°C and prepared by a
polymerization process comprising contacting under suitable
polymerization conditions monomers and the product of: silica
support material, one or more activators and one or more
compounds represented by the formula:

wherein: M1 is selected from the group consisting of
titanium, zirconium, hafnium, vanadium, niobium, tantalum,
chromium, molybdenum and tungsten;

R1 and R2 are identical or different, and are one of a
hydrogen atom, a C1-C10 alkyl group, a C1-C10 alkoxy group, a
C6-C10 aryl group, a C6-CI0 aryloxy group, a C2-C10 alkenyl
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group, a C2-C40 alkenyl group, a C7-C40 arylalkyl group, a C7-
C40 alkylaryl group, a C8-C40 arylalkenyl group, an OH group or
a halogen atom, or a conjugated diene which is optionally
substituted with one or more hydrocarbyl, tri(hydrocarbyl)silyl
groups or tri(hydrocarbyl)silylhydrocarbyl groups, said diene
having up to 30 atoms not counting hydrogen;

R3 are identical or different and are each a halogen atom,
a C3-C10 alkyl group which may be halogenated, a C6-C10 aryl
group which may be halogenated, a C2-C10 alkenyl group, a C7-
C40 -arylalkyl group, a C7-C40 alkylaryl group, a C8-C40
arylalkenyl group, a -NR'2, -SR', - OR', -OSiR'3 or -PR'2 radical,
wherein R' is one of a halogen atom, a C1-C10 alkyl group, or a
C6-C10 aryl group;

R4 to R7 are identical or different and are hydrogen, a C1-
C2 alkyl group, as defined for R3 or two or more adjacent
radicals R5 to R7 together with the atoms connecting them form
a ring;

B(R14)-, -Al(R14)-, -Ge-, -Sn-, -O-, -S-, -SO-, -SO2-,
-N(R14)-, -CO-, -P(R14)-, or - P(O)(R14)-, or an amidoborane
radical; M2 is one or more carbon, silicon, germanium, or tin;

wherein: R14, R15 and R16 are identical or different and
are a hydrogen atom, a halogen atom, a C1-C20 alkyl group, a
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C1-C20 fluoroalkyl or silaalkyl group, a C6-C30 aryl group, a C6-
C30 fluoroaryl group, a Cl-C20 alkoxy group, a C2-C20 alkenyl
group, a C7-C40 arylalkyl group, a C8-C40 arylalkenyl group, a
C7-C40 alkylaryl group, or R14 and R15, together with the atoms
binding them, form a ring;
or, R13 is represented by the formula:

wherein R17 to R24 are as defined for Rl and R2, or two or
more adjacent radicals R17 to R24, including R20 and R21,
together with the atoms connecting them form a ring;
M2 is carbon, silicon, germanium or tin;
R8, Rl0 and R12 are identical or different and have the
meanings stated for R4 to R7;
and
R9 and R11 are identical or different and are each a Group
IVA radical having from 2 to 20 carbon atoms or are each a
primary, secondary or tertiary butyl group, an aryl group, an
isopropyl group, trialkyl silyl group, or a fluoroalkyl group.
The Examiner maintains, and Appellants appeal, the rejection of
claims 11-33 under 35 U.S.C. § 103(a) as unpatentable over Okumura (U.S.
6,121,182, issued Sep. 19, 2000).
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Appellants do not separately argue any of the claims (App. Br. 10-14).
Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select independent
claim 11 as the representative claim on which our discussion will focus.
ISSUES ON APPEAL
Has the Examiner erred in determining that the claimed propylene
polymer product would have been obvious because Okumura does not teach
or suggest using a) the specific metallocene catalyst recited in claim 11 to
form the propylene polymer of Okumura and/or b) a silica support material
as recited in claim 11? If not, has the Examiner erred in concluding that the
weight of the evidence, taking into account Appellants’ evidence of non-
obviousness, weighs in favor of obviousness?
We answer all of these questions in the negative.
FINDINGS OF FACT (FF)
Findings of facts throughout this decision are supported by a
preponderance of the evidence.
We refer to the Examiner’s detailed factual findings stated in the
Answer (Ans. 3-4) and Final Office Action (2-4), as well as the Examiner’s
findings of fact in response to the Appeal Brief as set out on pages 5-6 of the
Answer in the “Response to Argument” section.
The following is in summary and for emphasis only. Claim 11 is
drawn to a product. Okumura describes a polypropylene polymer product
with the claimed melting point as recited in claim 11, prepared by a process
comprising contacting suitable monomers with the product of a silica
support material, an activator and a metallocene catalyst, however, Okumura
fails to describe the specific metallocene catalyst as recited in claim 11.
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As found by the Examiner, both Appellants’ and Okumura’s “bridged
metallocene catalysts . . . are substantially similar to each other with the
same or substantially identical catalytic centers” (Ans. 4).
As pointed out by the Examiner, Okumura explicitly describes that a
silica support (fine particle carrier) for the metallocene catalyst is
advantageous to reduce adhesion to the reactor wall and to obtain a high
bulk density of the polymer (e.g., Ans. 3-4; Okumura, col. 20, ll. 39-67,
(“[t]he fourth component (D) of the catalyst for preparing polyolefins . . . is
a fine particle carrier.”)).
Appellants’ Specification provides evidence that the use of a catalyst
encompassed by claim 11 does not usually result in a melting point above
160ºC. Appellants’ Specification contains only two (2) examples out of
over 100 runs encompassed by the invention wherein the melting point of
the resultant polymer was “at least 160ºC” as recited in claim 11 (i.e., see,
run # 72 and 75, Spec. 107, out of runs 26-134; runs 1-25 being of a
comparison metallocene catalyst system (Spec. 91-92)).
PRINCIPLES OF LAW
It has been well established that, when a product recited in product-
by-process format reasonably appears to be the same as or obvious from a
product of the prior art, the burden is on the applicant to show that the prior
art product is in fact different from the claimed product, even though the
products may be made by different processes. In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985).
An improvement in the art would have been obvious if "it is likely the
product not of innovation but of ordinary skill and common sense." KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Therefore, in making a
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determination of obviousness, one must consider the teachings of the
reference in light of the knowledge and capabilities of those of ordinary skill
in the art. See In re Paulsen, 30 F.3d 1475, 1480-81 (Fed. Cir. 1994); In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of
the artisan, rather than the lack thereof).
ANALYSIS
Appellants have chosen to describe their invention, in part, in terms of
how the polymer product was made as set out in claim 11. It is well
established that the appropriate focus is whether the product of claim 1 is
obvious over the prior art product.
The Examiner’s findings reasonably establish that the prior art would
have suggested the subject matter of claim 1, since the product taught and
described in Okumura appears to be the same or similar to the product as
claimed in claim 11 (that is, a propylene polymer with a melting point as
claimed prepared with a metallocene catalyst on a silica support). To the
extent that the use of a silica support and the specific metallocene catalyst
may change the propylene product, we agree with the Examiner that the use
of a silica support would have been prima facie obvious, since Okumura
explicitly teaches such a support may be used. Certainly, it would have been
no more than the predictable use of a prior art element, that is, a silica
catalyst support, according to its established function, as explicitly taught in
Okumura. KSR, 550 U.S. at 417.
Given the structural identity and similarity of the Okumura product to
Appellants’ product as claimed and disclosed respectively, we determine
that the Examiner was justified in concluding that the claimed invention
would have been obvious thereover. In a case where patentability rests upon
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how the claimed product was made, the PTO has no reasonable ability to
manufacture and determine whether there is, in fact, a patentable difference
between the prior art product and the claimed product. Thus, the burden
shifts to Appellants to prove that the claimed product is patentably
distinct/different over the prior art product. See Thorpe, 777 F.2d at 698.1
The burden is properly upon Appellants to show that their propylene
polymer formed by the metallocene catalytic process is a patentably
different (i.e., unobvious) structure than one produced by the of Okumura’s
described process, which includes the use of a very similar catalyst and a
silica support.
Appellants’ contentions that the claimed catalyst is significantly
different from that of Okumura because its differing substituents would
impact the stereoregularity and regioregularity of the polymer, which
“directly impact melting point, (App. Br. 10-11) are of no persuasive merit.
First, Appellants have not disputed that the propylene polymer of Okumura
has the claimed melting point (generally App. Br., Reply Br.). Second,
Appellants have also not refuted the Examiner’s finding that both
Appellants’ and Okumura’s metallocene catalysts have the same or
substantially identical catalytic centers (Ans. 4; generally App. Br., Reply
Br.). Furthermore, Appellants have not claimed any structural differences in
the resultant polymer structure, and the burden is properly upon Appellants
to show that the use of the claimed metallocene catalyst would have resulted
in a different propylene polymer.
Appellants’ position, which includes the evidence relied upon in
support thereof, is that it is well known that a silica support will result in a

1 See also In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
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lower melting point than a process wherein such a support is not used (App.
Br. 11-13), and that all of Okumura’s examples do not use a supported
catalyst (Reply Br. 6). Even assuming arguendo that this is correct, it is of
no persuasive merit substantially for reasons explained by the Examiner in
the Answer (see Ans. 5-6). Appellants contention that “there is no
motivation to support the metallocenes described in Okumura” (App. Br. 12)
is unavailing since Okumura explicitly teaches the use and advantages of a
silica support carrier. After all, “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-21. Even
assuming some melting point depression when a silica support is used,
Appellants have not shown that such results in a patentably distinct
structure.2 Indeed, even Appellants’ process using the claimed catalyst
would, more often than not, result in polymers with melting points lower
than 160ºC (see FF).
Furthermore, Appellants’ reliance on In re Garnero, 412 F.2d 276
(CCPA 1969), is misplaced (Reply Br. 5). We find Garnero distinguishable.
In Garnero, the claim at issue defined a panel “consisting essentially of
expanded perlite particles which are interbonded one to another by
interfusion.” 412 F.2d at 277. In contrast, claim 11 recites that the
propylene polymer has a melting point of at least 160°C, which is taught by
the applied prior art.
Appellants have provided no persuasive evidence, nor any persuasive
line of technical reasoning, explaining why the polymer product of Okumura

2 Appellants have also not shown that even if the melting point were
depressed via the use of a silica support, e.g., from 164ºC as shown in
Example 24 of Okumura, that the resultant melting point would not have
been at least 160ºC.
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is a different product than the product of claim 11. Notably, Appellants have
not demonstrated that the propylene polymer defined by the claimed
product-by-process limitations is patentably different and unobvious from
that employed in Okumura. In re Thorpe, 777 F.2d at 697; see also In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (mere arguments in the Brief or
conclusory statements in the specification regarding the properties of the
claimed product cannot take the place of objective evidence); in accord In re
Lindner, 457 F.2d 506, 508 (CCPA 1972).
Under these circumstances, Appellants have not persuaded us of any
error in the Examiner’s conclusion that the weight of the evidence, taking
into account Appellantsۥ evidence that a silica support will cause a melting
point depression, weighs in favor of obviousness. For these reasons, as well
as those expressed in the Answer, we determine that the Examiner has
established that the product of the prior art reasonably renders obvious all of
the requirements of the claimed product.
Thus, we affirm the rejection of claims 11-33 under 35 U.S.C. § 103
as unpatentable over Okumura.
ORDER
The decision of the Examiner is affirmed.
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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)(v).

AFFIRMED

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