Ex Parte MASI et al

Board of Patent Appeals and Interferences

Jul 26, 2002

08317826 (B.P.A.I. Jul. 26, 2002)

1 We note that the examiner indicates that minor errors exist in appellants’
copy of the claims. (answer, page 2).
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for publication and is not binding precedent of the Board.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. 43
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCESCO MASI, LIA BARAZZONI, SERGIO MASINI,
CESARE FERRERO and ANGELO MOALLI
____________
Appeal No. 1998-2451
Application No. 08/317,826
____________
ON BRIEF
____________
Before PAK, WARREN, and PAWLIKOWSKI, Administrative Patent Judges.
PAWLIKOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. ' 134 from the
examiner's final rejection of claims 1, 2, 4-10, 13-16, 26-35, and
48-53.1 Claims 1-17, 26-35, and 48-53 are pending in this
application. Claims 18-25 and 36-47 have been canceled. Claims 3,
11, and 12 have been allowed. Claim 17 has being withdrawn from
consideration.
The subject matter on appeal is represented by the following
claim 1:
1. A solid component of a catalyst for the (co)polymerization of
ethylene and
-olefins, which contains magnesium-carboxylate
bonds and transition metal-carboxylate bonds; which is
represented by the formula
M1Mg(0.3-20)X(2-60)A1(0-6)(R-C00)(0.1-3) (I);
and which is prepared by the steps of:
(a) forming a solution, in an inert organic solvent, of a
magnesium carboxylate or a magnesium carboxylate halogenide having
the formula MgXn(R-C00)2-n (II), where n ranges from 0 to 1, and at
least one transition metal carboxylate or transition metal
carboxylate halogenide having the formula MXm(R-C00)4-m (III), where
the atomic ratio between the magnesium in (II) and the transition
metal in (III) is from 0.3:1 to 20:1;
(b) adding to the solution an aluminum alkyl halide (IV),
where the alkyl group is a linear or branched alkyl group
containing 1-20 carbon atoms and the halide group is a halide other
than an iodide group, to precipitate the solid component of the
catalyst, where the atomic ratio between the halide in (IV) and the
total carboxyl groups in (II) and (III) is from 0.3:1 to 10:1; and
(c) recovering the solid component in a granular form;
where
M in formulas (I) and (III) is at least one transition metal
selected from the group consisting of titanium, vanadium,
zirconium, and hafnium;
X in formulas (I), (II), (III), and (IV) is halogen other than
iodine;
R in formulas (I), (II), and (III) is an aliphatic,
cycloaliphatic, or aromatic radical containing at least 4 carbon
atoms; and
m is from 0 to 2.
No prior art references are relied upon by the examiner.
Appeal No. 1998-2451
Application No. 08/317,826
2 We observe that the examiner’s rejection on page 3 of the answer indicates
that claims 20, 42, and 45 are included in this rejection. However, as
indicated supra, claims 20, 42, and 45 have been canceled. Also, the examiner
did not include claims 48-53 in this rejection, which contradicts the position
taken in the office action of Paper No. 33. We therefore presume that claims
1, 4, 5, 7-10, 13-16, 29-35, and 48-53 stand rejected in this rejection. This
coincides with PTOL-326 form of Paper No. 33.
3
The rejections at issue are as follows:
I. Claims 1, 4, 5, 7-10, 13-16, 29-35, and 48-53 stand
rejected under 35 U.S.C. ' 112, first paragraph (written
descriptions).2
II. Claims 2, 6, and 28 stand rejected under 35 U.S.C. ' 112,
first paragraph (written description).
On page 5 of the Brief, appellants state that the claims do
not stand or fall together, and group the claims with each
rejection. The examiner agrees with the grouping. Hence, we
consider claims 1 and 2 (the broadest claims of each respective
grouping). 37 CFR § 1.192(c)(5)(1997).
OPINION
We have carefully considered all of the arguments advanced by
the appellants in the brief and reply brief, and by the examiner in
the answer. Our decision based on this review is set forth below.
Appeal No. 1998-2451
Application No. 08/317,826
3 Appellants’ claim 2, for example, recites “p is between 1 and 2”.
4
I. The 35 U.S.C. § 112, first paragraph (written description)
rejection of claims 1, 4, 5, 7-10, 13-16, 29-35, 48-35
Firstly, we note that the examiner must establish a prima
facie case that the claims do not comply with § 112, first
paragraph, written description requirement, by showing that the
written description in the application does not "convey with
reasonable clarity to those skilled in the art that, as of the
filing date sought, [applicant] was in possession of the invention
. . . now claimed." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); see also In re Alton,
76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996), In re
Wertheim 541 F. 2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In this
context, we provide the following determinations.
On page 3 of the answer, the examiner states that there is
lack of support for the now claimed phrase Aaluminum alkyl halide”.
This phrase is recited in step (b) of claims 1, 5, and 48. The
examiner states that the specification, on page 6, at lines 6-11,
indicates that the phrase Aaluminum alkyl halide@ is qualified by
formula (IV). This formula is set forth on page 6 of the
specification. The examiner concludes it should be so qualified in
the claims.
Upon our review of page 6 of the specification, we observe
that when p (in formula (IV)) is between the value of 1 and 2 3,
Appeal No. 1998-2451
Application No. 08/317,826
4 The phrase “and the halide group” allows for multiple halide groups.
5
the formula on page 6 provides for an aluminum alkyl halide wherein
the alkyl is linear or branched, containing from 1 to 20 carbon
atoms, and the formula can have at most only two halides (when the
value of p is 1).
However, we observe that appellants= claim 1 recites having
multiple halides 4, i.e., in an amount greater than 2 to an amount
less than 2. Such claimed subject matter is not supported by the
aforementioned disclosure set forth on page 6 of appellants’
specification.
Hence, we find that the description of the “aluminum alkyl
halide” as set forth on page 6 of appellants= specification does
not allow for multiple halides from more than 2 to less than 2 as
now recited in the claims.
We are mindful of appellants’ arguments presented on pages 6-8
of the Brief, and on pages 4-8 of the Reply Brief. However, we
reiterate that the phrase “aluminum alkyl halide ... and the halide
group is a ...” allows for multiple halides from more than 2 to
less than 2.
Therefore, in view of the above, we affirm the rejection of
claims 1, 4, 5, 7-10, 13-16, 29-35, 42, and 45 under 35 USC ' 112
first paragraph (written description).
II. The 35 U.S.C. ' 112, first paragraph (written description)
rejection of claims 2, 6, and 28
Appeal No. 1998-2451
Application No. 08/317,826
6
On page 5 of the answer, the examiner rejects claims 2, 6 and
28, stating that there is no support in the specification for the
phrase AP is between 1 and 2".
Appellants argue that the range of Ap is between 1 and 2" is
supported by 3 examples which cover the lower limit of “p is 1",
the upper limit of Ap is 2", and the mid point of “p is 1.5".
(Brief page 8).
We refer to the case of Ex parte Jackson, 110 USPQ 561, 562,
(Pat. & Trademark Office Bd. App. 1956). In this case, the claim
at issue recited, inter alia, Afrom 4% to 20%, of carbonA. The
specification provided for 4%, 15% and 20%, for the amount of
carbon. The examiner asserted that such a disclosure was not
sufficient for all the values between 4% and 20%. We held that in
fact such a disclosure was sufficient to support the claim range of
Afrom 4% to 20% of carbon@.
In the instant case, we have a similar situation, i.e., the
examples provide for the values of 1, 1.2, and 2. In view of Ex
parte Jackson, we also conclude that such a description supports
the claimed range of Ap is between 1 and 2".
In view of the above, we reverse the rejection of claims 2, 6,
and 28 under 35 U.S.C. ' 112, first paragraph (written
description).
III. Conclusion
Appeal No. 1998-2451
Application No. 08/317,826
7
The rejection of claims 1, 4, 5, 7-10, 13-16, 29-35, and 48-53
under 35 U.S.C. ' 112, first paragraph (written description) is
affirmed.
The rejection of claims 2, 6, and 28 under 35 U.S.C. ' 112,
first paragraph (written description) is reversed.
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
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
BAP/lp
Appeal No. 1998-2451
Application No. 08/317,826
8
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