Ex parte Dolle et al.

Board of Patent Appeals and Interferences

Sep 24, 2001

08418847 (B.P.A.I. Sep. 24, 2001)

1
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not written for publication and is not binding precedent of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. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VOLKER DOLLE, MARTIN ANTBERG, JURGEN ROHRMANN,
WALTER SPALECK, and ANDREAS WINTER

___________
Appeal No. 1999-1418
Application No. 08/418,847
__________
ON BRIEF
_________
Before KIMLIN, GARRIS, and JEFFREY T. SMITH, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 5,
6, 11-16 and 23-26 which are all of the claims remaining in
the application.
The subject matter on appeal relates to a process for the
preparation of a polyolefin which includes the use of a
metallocene catalyst having a mono- or di- substituted
Appeal No. 1999-1418
Application No. 08/418,847
2
ethylene bridge. This appealed subject matter is adequately
illustrated by independent claims 5, 6, 23 and 25, a copy of
which taken from the appellants’ brief is appended to this
decision.
The reference set forth below is relied upon by the
examiner as evidence of obviousness:
Winter et al. (Winter) 5,416,178 May 16, 1995
(effective filing date Aug. 4, 1988)
Claims 23 and 24 are rejected under the first paragraph
of 35 U.S.C. § 112 “because there is no support in the
specification for the metallocene of these claims” (answer,
page 3).
All of the claims on appeal are rejected under 35 U.S.C.
§ 103 as being unpatentable over Winter.
These appealed claims have been separately grouped and
argued by the appellants as indicated on page 5 of the brief.
Accordingly, in our assessment of the above noted rejections,
we have appropriately considered each of these separately
grouped and argued claims.
OPINION
Having carefully considered the argument and evidence
advanced by the appellants and by the examiner on this appeal,
Appeal No. 1999-1418
Application No. 08/418,847
3
we determine that only the section 103 rejection of claims 5,
6 and 11-16 should be sustained.
Concerning the section 112 rejection, the examiner urges
that “[t]he bridge ‘ethylene-ethylene’ would appear to refer
to a bridge of the structure ‘-(CH ) ' which is not a species2 4-
of the metallocenes of Formula (I) on page 2 of the
specification” (answer, page 3). However, we cannot agree
with the manner in which the examiner has interpreted the
claim 23 phrase “ethylene-ethylene” since this interpretation
plainly is inconsistent with the appellants’ specification
disclosure. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983). Instead, we agree with the appellants’
basic position that one with ordinary skill in the art would
interpret this claimed phrase consistent with the
specification disclosure (e.g., see Example 29 and compare
Example 8 of the specification) as referring to “ethyl-
ethylene.” As so interpreted, appealed claims 23 and 24
indisputably define a metallocene which is supported, that is
disclosed, in the subject specification. It follows that we
Appeal No. 1999-1418
Application No. 08/418,847
According to 37 CFR § 1.75(d)(1), application claims1
must conform to the invention as set forth in the remainder of
the specification and the terms and phrases used in the claims
must find clear support or antecedent basis in the description
so that the meaning and terms in the claims may be
ascertainable by reference to the description. Therefore,
upon return of this application to the examiner’s
jurisdiction, the examiner should consider objecting to the
claim 23 phrase “ethylene-ethylene” as failing to conform with
the language of the subject specification and correspondingly
should require the appellants to change the claimed phrase
“ethylene-ethylene” to the specification phrase “ethyl-
ethylene” so as to eliminate the aforementioned nonconformity.
4
cannot sustain the examiner’s section 112, first paragraph,
rejection of these claims. 1
As for the section 103 rejection, we fully share the view
expressed in the answer and in the prior Board decision on
Appeal No. 93-2412 for parent application Serial No.
07/569,179 that the Winter reference establishes a prima facie
case of obviousness with respect to the here claimed subject
matter notwithstanding the appellants’ opposing viewpoint.
See, for example, Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989).
As rebuttal evidence of nonobviousness, the appellants
proffer the showings in their specification and in the Dolle
declarations executed February 24, 1995 and September 8, 1995.
Appeal No. 1999-1418
Application No. 08/418,847
5
Therefore, we must now retrace our assessment of the
obviousness issue before us giving due consideration to the
appellants’ evidence of nonobviousness in conjunction with the
examiner’s reference evidence of obviousness. In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
In his answer, the examiner has conceded, in essence,
that these showings establish unexpected results with regard
to the inventive metallocenes tested in comparison with the
closest prior art metallocene of Winter. As correctly urged
by the examiner, however, the inventive metallocenes tested in
the showings are limited to only those having certain
ethylene-bridged substitutions involving methyl, ethyl and
phenyl groups. Thus, we share the examiner’s position that
the proffered showings are considerably more narrow in scope
than the appellants’ argued independent claims 5 and 6.
Evidence presented to rebut a prima facie case of
obviousness must be commensurate in scope with the claims to
which it pertains, and such evidence which is considerably
more narrow in scope than the claimed subject matter is not
sufficient to rebut a prima facie case. In re Dill, 604 F.2d
1356, 1361, 202 USPQ 805, 808 (CCPA 1979). Because the
appellants’ showing is considerably more narrow than their
Appeal No. 1999-1418
Application No. 08/418,847
6
independent claims 5 and 6 as explained above, the evidence of
nonobviousness cannot be considered to outweigh the reference
evidence of obviousness. It follows that we will sustain the
examiner’s section 103 rejection based on Winter of
independent claims 5 and 6 and of claims 11-16 which depend
therefrom.
We reach a different conclusion with respect to appealed
claims 23 and 24. It is the examiner’s viewpoint that the
appellants’ showings do not evince nonobviousness with respect
to these claims because the showings do not relate to the “-
(CH ) -" species to which the examiner interprets these claims2 4
as being directed. We have previously explained, however,
that the examiner’s claim interpretation is inappropriate and
that these claims as properly interpreted are directed to the
appellants’ “ethyl-ethylene” embodiment. This last mentioned
embodiment unquestionably is tested in the appellants’ showing
and has yielded results which the examiner has indicated are
unexpected. Under these circumstances, we ultimately conclude
that the appellants’ evidence of nonobviousness outweighs the
examiner’s reference evidence of obviousness with respect to
appealed claims 23 and 24 as interpreted by this panel of the
Board. It follows that we cannot sustain the examiner’s
Appeal No. 1999-1418
Application No. 08/418,847
7
section 103 rejection of these claims as being unpatentable
over Winter.
We also cannot sustain the examiner’s section 103
rejection of appealed claims 25 and 26 as being unpatentable
over Winter. These claims are directed to the appellants’
racemic 1, 2-diphenyl-ethylene-bis-(1-indenyl) zirconium
dichloride embodiment, and this embodiment concededly has been
shown by the appellants to exhibit unexpected results (e.g.,
see specification Examples 9 and 10 as well as the Dolle
declaration executed September 8, 1995). Nevertheless, the
examiner regards these showings as more narrow and thus not
persuasive of nonobviousness with respect to claims 25 and 26
because “[t]here is no evidence that similar results would be
obtained when using different concentrations of metallocenes
and/or aluminoxanes, different aluminum/zirconium ratios,
different polymerization temperatures and different olefin
monomers” (answer, page 8).
However, the examiner has provided no evidentiary support
for his concern that the metallocene embodiment under
consideration would not yield unexpected results if the above
noted parameters were altered. On the other hand, the
appellants’ showings reveal that this embodiment displays
Appeal No. 1999-1418
Application No. 08/418,847
8
unexpected results under a variety of parameter conditions
including some of those listed by the examiner such as
differing metallocene concentrations and differing olefin
monomers (again see specification Examples 9 and 10 in
conjunction with the Dolle declaration executed September 8,
1995). These circumstances lead us to conclude that the
evidence before us on this appeal for and against obviousness,
on balance, weighs most heavily in favor of a nonobviousness
conclusion with respect to appealed claims 25 and 26.
In summary, we have sustained the examiner’s section 103
rejection of claims 5, 6 and 11-16 but not his section 103
rejection of claims 23-26. We also have not sustained the
examiner’s 112, first paragraph, rejection of claims 23 and
24.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1999-1418
Application No. 08/418,847
9
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1999-1418
Application No. 08/418,847
10
Ashley I. Pezzner
Connolly & Hutz
P.O. Box 2207
Wilmington, DE 19899-2077
Appeal No. 1999-1418
Application No. 08/418,847
1
APPENDIX
5. A process for the preparation of a polyolefin by
polymerization of an olefin of the formula R -CH=CH-R , in11 12
which R and R are identical or different and are a hydrogen11 12
atom or a C -C -alkyl radical, at a temperature of 0 C to 150 C,1 14 B B
under a pressure of 0.5 to 100 bar, in solution, in suspension
or in the gas phase and in the present of a catalyst which
consists essentially of a metallocene and an aluminoxane of
the formula (II)
for the linear type, and/or of the formula (III)
Appeal No. 1999-1418
Application No. 08/418,847
2
for the cyclic type, in which, in the formulae (II) and (III),
R is a C -C -alkyl group and n is an integer from 2 to 50,10 1 6
wherein the metallocene is at least one compound of the
formula (I)
in which
M is zirconium or hafnium,
R and R are identical or different and are a hydrogen 1 2
atom, a C -C -alkyl group, a C -C -alkoxy group,1 10 1 10
a C -C -aryl group, a C -C -aryloxy group, a C -C -6 10 6 10 2 10
alkenyl group, a C -C -arylalkyl group, a 7 40
C -C -alkylaryl group, a C -C -arylalkenyl group7 40 8 40
or a halogen atom,
R and R are identical or different and are a hydrogen 3 4
atom, a halogen atom, a C -C -alkyl group or a 1 10
-NR , SR , -OR , -OSir -Sir or -PR radical,9 9 9 9 9 92 3, 3 2
in which R is a C -C -alkyl group, a C -C -aryl 9 1 10 6 10
group or, in the case of radicals containing Si
or P, also a halogen atom,
Appeal No. 1999-1418
Application No. 08/418,847
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or in each case two adjacent radicals R or R , together3 4
with the carbon atoms joining them, form a ring,
R , R and R are a hydrogen atom and 5 6 7
R is a phenyl, benzyl, methyl, ethyl, trifluoromethyl or8
methoxy group.
6. A process for the preparation of a polyolefin by
polymerization of an olefin of the formula R -CH=CH-R , in11 12
which R and R are identical or different and are a hydrogen11 12
atom or a C -C -alkyl radical, at a temperature of 0 C to 150 C,1 14 B B
under a pressure of 0.5 to 100 bar, in solution, in suspension
or in the gas phase and in the present of a catalyst which
consists essentia
lly of a metalloc
ene and an
aluminoxa ne of
the formula
(II)
for the linear type, and/or of the formula (III)
Appeal No. 1999-1418
Application No. 08/418,847
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for the cyclic
type, in which,
in the formulae
(II) and (III),
R is a C -C -10 1 6
alkyl group
and n is an
integer from 2
to 50, wherein
the metalloc
ene is at least
one compound of the formula (I)
in which
M is zirconium or hafnium,
Appeal No. 1999-1418
Application No. 08/418,847
5
R and R are identical or different and are a hydrogen 1 2
atom, a C -C -alkyl group, a C -C -alkoxy group,1 10 1 10
a C -C -aryl group, a C -C -aryloxy group, a C -C -6 10 6 10 2 10
alkenyl group, a C -C -arylalkyl group, a 7 40
C -C -alkylaryl group, a C -C -arylalkenyl group7 40 8 40
or a halogen atom,
R and R are identical or different and are a hydrogen 3 4
atom, a halogen atom, a C -C -alkyl group or a 1 10
-NR , SR , -OR , -OSir -Sir or -PR radical,9 9 9 9 9 92 3, 3 2
in which R is a C -C -alkyl group, a C -C -aryl 9 1 10 6 10
group or, in the
case of radical
s contain
ing Si or
P, also
a halogen atom,
or in each
case two adjacen
t radicals R or3
R , togethe4
r with the carbon atoms joining them, form a ring,
R and R are a hydrogen atom and 5 7
R and R are identical or different and are a phenyl, benzyl, 6 8
methyl, ethyl, trifluoromethyl or methoxy group.

23. A process for the preparation of a polyolefin by
polymerization of an olefin of the formula R -CH=CH-R , in11 12
which R and R are identical or different and are a hydrogen11 12
atom or a C -C -alkyl radical, at a temperature of 0 C to 150 C,1 14 B B
under a pressure of 0.5 to 100 bar, in solution, in suspension
or in the gas phase and in the present of a catalyst which
consists essentially of a metallocene and an aluminoxane of
the formula (II)
Appeal No. 1999-1418
Application No. 08/418,847
6
for the linear type, and/or of the formula (III)
for the cyclic
type, in which,
in the formulae
(II) and (III),
R is a C -C -10 1 6
alkyl group and
n is an integer
from 2 to 50, wherein the metallocene is wherein said
metallocene is ethylene-ethylene(indenyl) zirconium2
dichloride.
25. A process for the preparation of a polyolefin by
polymerization of an olefin of the formula R -CH=CH-R , in11 12
which R and R are identical or different and are a hydrogen11 12
atom or a C -C -alkyl radical, at a temperature of 0 C to 150 C,1 14 B B
Appeal No. 1999-1418
Application No. 08/418,847
7
under a pressure of 0.5 to 100 bar, in solution, in suspension
or in the gas phase and in the present of a catalyst which
consists essentially of a metallocene and an aluminoxane of
the formula (II)
for the linear
type, and/or of
the formula
(III)
for the cyclic type, in which, in the formulae (II) and (III),
R is a C -C -alkyl group and n is an integer from 2 to 50,10 1 6
Appeal No. 1999-1418
Application No. 08/418,847
8
wherein said metallocene is racemic 1,2-diphenyl-ethylene-bis
(1-indenyl) zirconium dichloride.