Ex Parte Burns et al

Board of Patent Appeals and Interferences

May 28, 2010

11108274 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID H. BURNS and DONALD W. VERSER
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Appeal 2009-011778
Application 11/108,274
Technology Center 1700
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Decided: May 28, 2010
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Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1, 3 through 5, 7 through 9, 12 through
14, 16 through 21, and 23 through 27, which are all of the claims pending in
the above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
We REVERSE.
Appeal 2009-011778
Application 11/108,274

STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, a
polymerization reactor.
The Examiner maintains the following rejections:
1) Claims 19, 20, and 23-25 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
2) Claims 1, 3-5, 7, 8, 12-14, 16, and 23-27 under 35 U.S.C. § 103(a)
as unpatentable over Young (US 5,098,667, issued Mar. 24, 1992);
3) Claims 18-21 under 35 U.S.C. § 103(a) as unpatentable over
Young; and
4) Claims 9 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Young and Kendrick (US 6,833,415 B2, issued Dec. 21, 2004).

REJECTION (1)
ISSUE
Did the Examiner err in finding that the later claimed negative
limitations "without a ball check feeder valve" recited in claim 19; “does not
receive” catalyst though a ball check feeder valve as required by claims 23
and 25; and "does not provide” catalyst to a positive displacement pump
through a ball check feeder valve as required by claim 24 were not described
in the originally filed disclosure within the meaning of 35 U.S.C. § 112, first
paragraph? We decide this issue in the affirmative.

FINDINGS OF FACT
1. The Specification discloses that because the "ball-check feeder [valve]
discharges the catalyst mud from the catalyst mud chamber in an
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intermittent fashion . . . [and] may leak catalyst slurry into the lead-in
pipe between rotations, so extra catalyst slurry may at times be fed
into the loop reactor[,]. . . there remains a desire for a system that
continuously and reliably delivers catalyst slurry to a loop reactor."
(Spec. ¶¶[0005]-[0010]) (emphasis added).
2. The Specification also discloses that "[t]he present invention . . .
provides an improved apparatus for . . . continuously feeding a
catalyst slurry to a polymerization reactor . . . [and] includes a first
slurry storage tank . . . a pump to receive the catalyst slurry from [the]
. . . storage tank[ ]. . . [and a] controller . . . [to] make the catalyst
slurry continuously available from one storage tank." (Spec. ¶ [0014])
(emphasis added). In addition, the Specification discloses that this
controller "improves the reliability of the catalyst slurry feed system"
by comparing the feed rate of the catalyst slurry fed into the reactor to
a calculated feed rate and altering the flow of the catalyst slurry into
the polymerization reactor accordingly. (Spec. ¶¶ [0036] and [0037])
(emphasis added).
3. The Specification is silent regarding the use of a ball check feeder
valve in its disclosed invention. (See Spec. its entirety).

PRINCIPLE OF LAW
As stated in Ariad Pharms., Inc. v. Eli Lilly and Co.,
the test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing
date. . . .
The term “possession,” however, has never been very
enlightening. It implies that as long as one can produce records
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documenting a written description of a claimed invention, one can
show possession. But the hallmark of written description is
disclosure. Thus, “possession as shown in the disclosure” is a more
complete formulation. Yet whatever the specific articulation, the test
requires an objective inquiry into the four corners of the specification
from the perspective of a person of ordinary skill in the art. Based on
that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.

598 F. 3d 1336, 1351 (Fed. Cir. 2010) (en banc).

ANALYSIS AND CONCLUSION
The Examiner states that
[s]ince [A]ppellants' original disclosure does not have any basis for
the negative limitation "without a ball check feeder valve" as claimed
in claim 19 (line 3), the negative limitation "does not receive" as
claimed in claim 23 (line 1), claim 24 (line 1), and claim 25 (line 1),
the rejection set forth under 35 U.S.C. 112, first paragraph is proper.

(Ans. 3).
Contrary to the Examiner's statement that Appellants' disclosure "does
not have any basis" for the negative limitations recited in claims 19 and 23-
25, Appellants' Specification explicitly discloses problems associated with
the use of a ball check feeder valve such as intermittent discharging of
catalyst and leaking catalyst slurry into the reactor between rotations of the
ball check feeder valve. (FF 1). In addition, Appellants' Specification
discloses solutions to these problems by using an apparatus having, inter
alia, a storage tank, pump, and a controller to continuously and reliably feed
the catalyst slurry to the polymerization reactor. (FF 2). In addition,
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Appellants' disclosure is silent regarding the use of a ball check feeder valve
in its apparatus. (FF 3).
As Appellants correctly state, "the present application discusses
problems of the use of ball check feeder valves, and a desire for more
reliable and continuous (not intermittent as with the ball check feeder valve)
catalyst delivery systems." (App. Br. 13).
Accordingly, we find that one of ordinary skill in the art reading
Appellants' disclosure would have understood Appellants' claimed invention
as an apparatus having no ball check feeder valve as required by claims 19
and 23-25. See Ariad, 598 F.3d at 1351.
Thus, it follows that the Examiner erred in finding that the later
claimed negative limitations of claims 19, and 23-25 were not described in
the originally filed disclosure within the meaning of 35 U.S.C. § 112, first
paragraph. We reverse rejection (1).

REJECTIONS (2) and (3)

ISSUE
Did the Examiner err in determining that Young would have rendered
obvious an apparatus having a pump for delivering catalyst slurry to a
polymerization reactor as required by claims 1, 16, and 18, or an apparatus
having a controller that receives a signal from a flow meter and signals a
pump to adjust the flow of the catalyst slurry as required by claims 1, 12,
and 16 within the meaning of § 103? We decide this issue in the affirmative.

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ANALYSIS AND CONCLUSION
With respect to claims 1, 16, and 18, which require, inter alia, a pump
for delivering catalyst slurry to a polymerization reactor, the Examiner states
that "Young et al. disclose . . . a pump to manipulate flow." (Ans. 5).
Specifically, the Examiner states that "[because] the pump 52 of Young et al.
can work together with valve 78 to regulate the flow of catalyst to the
reactor, the reference to Young et al. has adequately met the claimed . . .
pump requirement as claimed [in claims 1, 16, and 18]." (Ans. 14). We
disagree.
Contrary to the Examiner's statement, Young's pump 52 is used to
recycle dilute catalyst slurry to and from the mix tank. (See Young, Fig. 1
and col. 5, ll. 20-26). The Examiner does not direct us to any credible
teaching or provide any persuasive explanation to support the Examiner's
position that pump 52, when "work[ing] together with valve 78," delivers
catalyst slurry to a reactor as required by claims 1, 16, and 18. Nor does the
Examiner explain why it would have been obvious to modify pump 52 in
Young's apparatus to deliver a catalyst slurry to the reactor.
Indeed, Appellants correctly state that
Independent claims 1 . . . and 16 recite a pump that delivers the
catalyst slurry from the storage tank to the polymerization reactor.
Similarly, independent claim 18 recites that a pump receives catalyst
slurry from the first and/or second run tank, and provides the catalyst
slurry to the polymerization reactor. . . .
Contrary to the Examiner's assertion, the Young pump 52 does
not control or regulate the amount of catalyst slurry flowing to the
reactor, and is not configured to do so. . . .
To be sure, the Young pump 52 is merely a recycle pump and is
not configured to deliver the Young catalyst slurry to the downstream
reactor. For example, no piping or hydraulically-full vessel couples
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the discharge of the pump 52 to the downstream polymerization
reactor.

(App. Br. 18-19).
With respect to claims 1, 12, and 16, which require, inter alia, that a
controller receives a signal from a flow meter and signals a pump to adjust
the flow of the catalyst slurry, the Examiner states that "the catalyst delivery
system also comprises a controller [connected] to a sensor (Figure 1, 58) that
measures flow of the catalyst slurry to the reactor and [that the controller]
manipulate[s] or control[s] the amount of flow of catalyst slurry to the
reactor via a control valve (Figure 1, 78)." (Ans. 4).
In addition, the Examiner states that
it would not be difficult to one of ordinary skill in [the] art to
recognize that any equivalent device . . . capable [of] receiving a
signal from the controller to manipulate flow is a functionally
equivalent device of the device taught in Young et al. Motivated by
the expectation of success of manipulating flow with a simpler device,
it would have been obvious to one of ordinary skill in [the] art to in
[sic] incorporate a pump [i.e., pump 52] with a valve controlling
capability [of controlling valve 78].

(Ans. 5-6). In reference to our above discussion, Young teaches that pump
52 is used to recycle dilute catalyst slurry to and from the mix tank. (See
Young, Fig. 1 and col. 5, ll. 20-26). In addition, Young teaches that flow
sensor (meter) 58 "provides an output signal 70 which is representative of
the flow rate of dilute catalyst slurry through conduit 60 [and traveling to the
reactor]" and that this output signal 70 is used, inter alia, by the flow
controller 72 to control the flow rate of the dilute catalyst slurry through
conduit 60 and traveling to the reactor via control valve 78. (Young, col. 5,
ll. 41-45 and col. 6, ll. 51-65).
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Thus, it is unclear to us why one of ordinary skill in the art would
control Young's pump 52, which recycles catalyst slurry to and from the mix
tank, via a controller based on an output of Young's flow sensor (meter) 58,
which measures the amount of flow rate of catalyst slurry flowing through
conduit 60 as it travels to the reactor and not the flow rate of catalyst slurry
being recycled to and from the mix tank. The Examiner simply fails to
explain how Young's pump 52, which recycles catalyst slurry to and from
the mix tank, is related to or effects the flow of catalyst slurry as it travels to
the reactor.
Thus, it follows that the Examiner erred in determining that Young
would have rendered obvious an apparatus having a pump for delivering
catalyst slurry to a polymerization reactor as required by claims 1, 16, and
18, or an apparatus having a controller that receives a signal from a flow
meter and signals a pump to adjust the flow of the catalyst slurry as required
by claims 1, 12, and 16 within the meaning of § 103.
Accordingly, we reverse the Examiner's rejections (2) and (3).

REJECTION (4)
With respect to rejection (4), because the Examiner relies on, inter
alia, the same findings discussed above and does not provide any findings as
to how Kendrick would satisfy the disputed claim feature (Ans. 8-9), we
reverse the Examiner's § 103 rejection.

ORDER
In summary, the rejections made by the Examiner are reversed.
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REVERSED

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FLETCHER YODER (CHEVRON PHILLIPS)
P.O. BOX 692289
HOUSTON, TX 77069
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