Ex parte Kersting et al.

Board of Patent Appeals and Interferences

Jun 19, 1998

07943025 (B.P.A.I. Jun. 19, 1998)

Application for patent filed September 10, 1992.1
1
Paper No. 18
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MEINOLF KERSTING,
JUERGEN KERTH, KLAUS-DIETER HUNGENBERG,
AND PETER KOELLE
______________
Appeal No. 95-0996
Application 07/943,0251
_______________
ON BRIEF
_______________
Before JOHN D. SMITH, GARRIS and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 and 2. Claims 3
through 5, the only
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2
remaining claims in this application, stand withdrawn from
consideration as being directed to a nonelected invention
(main brief, page 1).
According to appellants, the invention is directed to the
preparation of Ziegler-Natta catalysts, followed by treatment
with carbon dioxide to completely inactivate the catalyst so
that the catalyst can be stored for prolonged periods with
subsequent reactivation by reaction with a cocatalyst (main
brief, paragraph bridging pages 1 and 2). Claims 1 and 2 are
reproduced below:
1. A process for the preparation of a deactivated
Ziegler-Natta catalyst system with a long storage life,
suitable upon reactivation, for the preparation of polymers of
propylene and
of polymers of propylene together with other "-olefins
containing, as active components,
a) a titanium-containing solid component which contains
titanium, magnesium, halogen and a carboxylic ester
and, as a cocatalyst,
b) an aluminum compound and
c) a further election [sic, electron] donor, which
comprises reacting components a), b), and c), wherein,
after the reaction, the reaction mixture is deactivated
by reaction with carbon dioxide.
2. A Ziegler-Natta catalyst system prepared by a process
as claimed in claim 1.
The examiner has relied upon the following reference as
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evidence of obviousness:
Tachikawa et al. (Tachikawa I) 0 201 647 Nov. 20, 1986
(European Patent Application)
This Board panel relies upon the following references of
record:
Collomb-Ceccarini et al. (EP ‘410) 0 170 410 Feb. 5, 1986
(European Patent Application)
Tachikawa et al. (Tachikawa II) 0 188 914 Jul. 30, 1986
(European Patent Application)

Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
unpatentable over Tachikawa I. We reverse this rejection.
However, pursuant to the provisions of 37 CFR § 1.196(b), we
enter the following new ground of rejection. Claims 1 and 2
are rejected under 35 U.S.C. § 103 as unpatentable over EP
‘410 or Tachikawa II for reasons which follow.
OPINION
A. The Rejection over Tachikawa I
The process of appealed claim 1 requires reacting the
three components (a), (b) and (c) of the Ziegler-Natta
catalyst system “wherein, after the reaction, the reaction
mixture is deactivated by reaction with carbon dioxide.” In
proceedings before the PTO, claims in an application are to be
given their broadest reason-able interpretation consistent
Appeal No. 95-0996
Application 07/943,025
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with the specification and claim language should be read in
light of the specification as it would be interpreted by one
of ordinary skill in the art. See In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983). The specification
defines “deactivated” as “no longer active with regard to
polymerization.” (specification, page 8, lines 1-2).
Tachikawa I teaches that conventional Ziegler-Natta
catalysts have such a high activity that disadvantageous
results occur (page 1, lines 22-35). Tachikawa I further
discloses that advantageous results occur if this catalyst
system can be “temporarily inhibited” by contact with an
activity inhibitor (page 2, lines 1-13). The activity
inhibitor can be carbon monoxide or carbon dioxide and
“temporarily inactivates a part of all the active sites on the
polymerization catalyst.” (page 7, lines 17-24). The
“temporarily inactivated” catalyst can be immediately used in
the standard polymerization reactions (see Examples 1-4).
Accordingly, Tachikawa I fails to disclose or suggest the
complete deactivation of the catalyst system required by the
process of appealed claim 1.
The examiner argues that the quoted portion from page 7,
lines 23-24, of Tachikawa I should read “[t]he activity
Appeal No. 95-0996
Application 07/943,025
It is noted that appellants have cited Tachikawa et al., U.S. Patent2
No. 5,037,908, as corresponding to the priority document of Tachikawa I.
Appellants further note that the disputed language of Tachikawa I occurs at
column 5, lines 45-46, of the Tachikawa patent (reply brief, pages 2 and 3).
5
inhibitor temporarily inactivates a part of [sic; or] all of
the active sites on the polymerization catalyst” (main answer,
page 3, and supplemental answer, page 1, emphasis added). The
examiner thus concludes that the reference contemplates
deactivating the catalyst (main answer, page 3). The examiner
does not present any reasoning or evidence to support this2
interpretation of Tachikawa I other than to state that the
phrase “of all” is redundant (supplemental answer, page 1).
We find the phrase found at page 7, lines 23-24, of Tachikawa
I is not redundant. From the disclosure and teachings of
Tachikawa I regarding the disadvantageous high rate of
reaction of conventional Ziegler-Natta catalysts, the role of
the activity inhibitor is as set forth on page 7, i.e., to
temporarily inactivate just part of all the catalyst’s active
sites. No other meaning can be adduced from the evidence of
record. The examiner’s conclusion that the reference
contemplates complete deactivation of the catalyst is not
based on facts. Accordingly, the rejection of claims 1 and 2
under 35 U.S.C. § 103 as unpatentable over Tachikawa I is
reversed. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
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Application 07/943,025
All examples in the reference use carbon monoxide as the activity3
inhibitor except Example 5, which uses allene as the inhibitor. See pages
6
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968)(“Where the legal conclusion of obviousness is not
supported by facts it cannot stand.”).
B. The Rejection Pursuant to 37 CFR § 1.196(b)
The requirements of the process of claim 1 have been
discussed above. Tachikawa II discloses a process for
copolymerizing ethylene with an alpha-olefin in the presence
of a Ziegler-Natta catalyst system (abstract and page 1, lines
7-10). This reference teaches that these catalyst systems
have a high catalytic activity which produces copolymer
particles with poor properties (page 1, lines 25-30).
Tachikawa II obviates this problem by temporarily inhibiting
catalyst activity as a result of contacting the catalyst with
an activity inhibitor (page 1, lines 30-35, and page 2, lines
5-9). The catalyst system of the reference is formed by
reacting a component containing titanium, halogen, and an
organometallic compound such as magnesium, with an aluminum
compound and an electron donor (page 2, line 10-page 7, line
13). The activity inhibitor of the reference includes carbon
monoxide and carbon dioxide (page 7, lines 14-16). 3
Appeal No. 95-0996
Application 07/943,025
9-12 of Tachikawa II.
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Tachikawa II differs from Tachikawa I, as discussed
above, by specifically teaching that “the active sites on the
polymerization catalyst are partly or entirely modified by the
activity inhibitor.” (page 8, lines 6-8, emphasis added).
Thus complete deactivation is contemplated by Tachikawa II,
although not exemplified. This reference also teaches that
this polymerization catalyst which has been contacted with the
activity inhibitor can be stored for periods of time, with
subsequent reactivation by reaction with a cocatalyst such as
an organometallic compound (page 8, lines 9-11 and 13-16).
Accordingly, in view of the disclosure of carbon dioxide
as an activity inhibitor and the teaching of complete
deactivation of the catalyst system by Tachikawa II, the use
of this activity inhibitor in amounts to completely deactivate
a Ziegler-Natta catalyst system would have been obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C. §
103.
EP ‘410 has a similar disclosure to that of Tachikawa II
in that Ziegler-Natta type catalyst systems used in the
polymerization of alpha-olefins have too much activity and
must be treated with polymerization inhibiting agents
Appeal No. 95-0996
Application 07/943,025
As discussed by the examiner on page 3 of the main answer, the process4
of claim 1 is not limited to any specific time period subsequent to the
deactivation. The claimed term “with a long storage life” is not defined in
the claim or the specification (see page 8, lines 2-4).
8
(abstract, page 1, lines 1-14, page 2, lines 5-21, and page 3,
lines 29-32). EP ‘410 teaches that treating these catalysts
and the co-catalyst organoaluminum compound with
polymerization inhibitors such as carbon monoxide or carbon
dioxide renders the catalyst system “totally inactive for the
polymerisation of olefins” for a short period known as the
induction period (page 3, line 32-page 4, line 8). EP ‘410
defines a polymerization inhibiting agent as “any compound . .
. capable of slowing down or totally stopping the
polymerisation of the alpha-olefins in the presence of a
catalyst system of the Ziegler-Natta type” (page 12, lines 24-
31). Thus one of ordinary skill in the art would have
reasonably concluded from the teachings of EP ‘410 that
complete inactivation of the catalyst system for a time
period was contemplated. This conclusion is further4
reinforced by the teaching in EP ‘410 on page 13 regarding the
amounts of polymerization inhibiting agent that may be used,
including large amounts of the agent as long as the catalyst
is not poisoned.
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Carbon monoxide and carbon dioxide are the preferred
polymerization inhibitors of EP ‘410 (page 12, lines 32-35).
Carbon dioxide is specifically exemplified in Example 10 on
page 28 of EP ‘410. The reactivation of the catalyst system
by reaction with a co-catalyst is taught by EP ‘410 at page
14, lines 12 et seq. Some specific components of a Ziegler-
Natta catalyst, as recited in appealed claim 1, are disclosed
on pages 18-19 of EP ‘410. Electron donors as catalyst
components are taught by EP ‘410 on page 6. The “carboxylic
ester” component of the catalyst in appealed claim 1 is not
specifically disclosed or taught by EP ‘410 but such compounds
were well known components of Ziegler-Natta catalyst systems
(compare EP ‘410, page 5, line 11-13, and page 6, lines 4-8,
with Tachikawa II, page 2, lines 35-36).
For the foregoing reasons, the subject matter of
appealed claim 1 would have been obvious to one of ordinary
skill in the art within the meaning of 35 U.S.C. § 103 in view
of the disclosure and teachings of EP ‘410.
Although not discussed by appellants, the product-by-
process recited in claim 2 would have been obvious within the
meaning of 35 U.S.C. § 103 to one of ordinary skill in the art
given the disclosures and teachings of Tachikawa II or EP
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‘410, for the reasons stated above. A lesser burden of proof
is needed to make out a prima facie case of obviousness in
product-by-process claims than in conventional product claims.
See In re Fessman, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA
1974). Once it is shown that the claimed product reasonably
appears to be the same or substantially similar to the product
of the prior art, the burden shifts to appellants to
establish, through objective evidence, an unobvious difference
between the claimed and prior art product. See In re Best,
562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977); Ex
parte Phillips, 28 USPQ2d 1302, 1303 (Bd. Pat. App. & Int.
1993).
The Kersting Declaration dated Dec. 6, 1993, has been
considered. However, in view of the new ground of rejection,
this comparison is not with the closest prior art. See In re
Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991). Accordingly, we find that appellants have
not presented objective evidence, on this record, which would
serve to rebut the prima facie case of obviousness established
by Tachikawa II or EP ‘410.
C. Summary
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The rejection of claims 1 and 2 under 35 U.S.C. § 103 as
unpatentable over Tachikawa I is reversed. Pursuant to the
provisions of 37 CFR § 1.196(b), a new ground of rejection of
claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over
Tachikawa II or EP ‘410 has been made.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
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(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED - 37 CFR § 1.196(b)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
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Keil & Weinkauf
1101 Connecticut Avenue., N.W.
Washington, DC 20036
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Application 07/943,025
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TAW/cam