Ex Parte Hottovy

Board of Patent Appeals and Interferences

May 29, 2009

10699151 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN D. HOTTOVY
____________

Appeal 2009-001955
Application 10/699,151
Technology Center 1700
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Decided:1 May 29, 2009
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Before CHUNG K. PAK, TERRY J. OWENS, and CATHERINE Q. TIMM,
Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001955
Application 10/699,151

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the invention on appeal:
1. A polymerization process comprising:

polymerizing in a loop reactor having an inner surface, at least one
olefin monomer in a liquid medium to produce a fluid slurry comprising
solid olefin polymer particles in a liquid medium, wherein said inner surface
of said loop reactor has a root mean square surface roughness less than about
120 micro inches.

On review is the Examiner’s rejection of claims 1-6 under 35 U.S.C.
§ 103(a) as unpatentable over U.S. Patent 3,244,681 issued April 5, 1966 to
Rohlfing et al.2
II. DISPOSITIVE ISSUE
Has Appellant established that the Examiner reversibly erred in
finding a suggestion in Rohlfing for smoothing the inner surface of a loop
reactor to a root mean square surface roughness less than about 120 micro
inches?
III. FINDINGS OF FACT

2 The Examiner refers to the patent as “Stanley et al.” in some locations and
“Rohlfing et al.” in others. Appellant refers to the patent as “Rohlfing.” We
will also refer to the patent as “Rohlfing.”
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Application 10/699,151

The following enumerated Findings of Fact (“FF”) are of particular
relevance:
1. The Examiner finds that Rohlfing suggests employing a loop reactor
with smooth inner surfaces to reduce reactor fouling (Ans. 4, citing
Rohlfing, col. 1, ll. 61-64 and col. 6, claim 3).
2. According to the Examiner, it would have been obvious to one of
ordinary skill in the art to polish the inner surface of the loop reactor
of Rohlfing to obtain a root mean square surface roughness less than
about 120 micro inches to further reduce fouling (Ans. 4).
3. Appellant contends that column 1, lines 60-65 of Rohlfing is devoid
of a teaching or suggestion of a loop reactor surface having a root
mean square surface roughness less than about 120 micro inches and
there is no appropriate reason to modify the Rohlfing reference to
obtain the claimed degree of smoothness (Br. 6).
4. Column 1, lines 60-65 of Rohlfing indicate that methods and
apparatus were known in the loop reactor art “for reducing the fouling
of reaction surfaces by carrying out the polymerization reaction in a
tubular closed loop reaction zone with smooth surfaces.”
5. Appellant points out that column 1, lines 60-65 merely states that the
surface is smooth without providing a value of roughness or
smoothness (Br. 5).
6. According to Appellant’s Specification “[k]nown slurry loop reactors
have root mean square surface roughness values of 125 or greater (in
units of micro inches).” (Spec. ¶ [0028].)
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Application 10/699,151

7. “Appellant believes that the roughness of the Rohlfing [loop reactor
surfaces] is well above 125 micro inches (far outside of the claimed
range) when considering the age of the reference.” (Br. 6.)
8. Appellant’s Specification does not disclose any new or unobvious
method of obtaining the claimed level of smoothness (Spec. in its
entirety).
IV. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). In considering the question of the obviousness, we consider what
the prior art references expressly teach, but we also consider what the prior
art would have suggested to one of ordinary skill in the art at the time the
invention was made. Merck & Co., v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). We
also take into account the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009).
“If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability.”
Attorney argument in the briefs cannot take the place of evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

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Appeal 2009-001955
Application 10/699,151

V. ANALYSIS
There is no question that Rohlfing suggests employing a reactor with
smooth inner surfaces (FF 1); just how smooth, the reference does not
disclose (FF 5). While Appellant argues that he believes that the roughness
“is well above 125 micro inches (far outside of the claimed range) when
considering the age of the reference” (FF 7), Appellant offers no evidence in
support of this belief. Therefore, this attorney argument in the Brief is of
little probative value. Appellant’s Specification states that “[k]nown slurry
loop reactors have root mean square surface roughness values of 125 or
greater (in units of micro inches).” (Spec. ¶ [0028]). But again there is no
objective evidence in support of this statement. Nor does the statement, or
the Specification as a whole, provide evidence that Appellant had taken into
account the teachings of Rohlfing when making this statement. It remains
that the evidence of record does not establish that one of ordinary skill in the
art would have been limited to using smooth walled reactors of sufficient
roughness to be outside the claimed 120 micro inch range.
On the other hand, the Examiner has pointed to an explicit teaching
within Rohlfing suggesting that one of ordinary skill in the art would have
selected a reactor with smooth walls to prevent fouling (FF 1). The desire of
preventing fouling and the teaching of the general condition of smoothness
provides support for a finding that nothing more than routine
experimentation was required for one of ordinary skill in the art to determine
the degree smoothness (measured by, for instance, root mean square surface
roughness) that would result in the expected anti-fouling property.
Therefore, taking into consideration, as we must, the level of ordinary skill
in the art, Graham v. John Deere Co., 383 U.S. 1, 17 (1966), we agree with
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Appeal 2009-001955
Application 10/699,151

the Examiner that the evidence supports a conclusion of obviousness in the
absence of any evidence that the claimed degree of smoothness represented
by the claimed root mean square surface roughness range was not obtainable
by conventional means within the skill in the art or that Appellant obtains
unexpected results. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (when
prior art teaches the general conditions of a claimed process, modifications
within the capabilities of those of ordinary skill in the art obtainable by
routine experimentation support an obvious rejection unless the applicant
shows that the particular claimed range produces a new and unexpected
result).
Appellant does not rely upon any evidence that the claimed range of
smoothness represented by the root mean square surface roughness
measurement produces unexpected results. Nor does Appellant advance a
convincing argument supported by evidence that the claimed level of
smoothness would not have been obtainable by those of ordinary skill in the
art. In fact, Appellant’s own Specification does not disclose the method
used to obtain the claimed level of smoothness (FF 8). Assuming
Appellant’s Specification provides enablement for what is claimed, it is
reasonable to conclude that methods of obtaining the claimed smoothness
were known in the art.
VI. CONCLUSION
Appellant has not established that the Examiner reversibly erred in
finding a suggestion in Rohlfing for smoothing the inner surface of a loop
reactor to a root mean square surface roughness less than about 120 micro
inches. Therefore, we sustain the Examiner’s rejection of claims 1-6 under
35 U.S.C. § 103(a).
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Appeal 2009-001955
Application 10/699,151

VII. DECISION
The decision of the Examiner is affirmed.
VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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