Ex Parte Mastroianni

Patent Trial and Appeal Board

Sep 28, 2016

11921270 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111921,270 11129/2007
23117 7590 09/30/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Sergio Mastroianni
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
LCM-4702-81 4288
EXAMINER
ENG, ELIZABETH
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
09/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGIO MASTROIANNI 1
Appeal2015-003021
Application 11/921,270
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
decision2 rejecting claims 1, 2, 4, 6, 8-12, and 18-23 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Ineos Sales (UK)
Limited. Appeal Br. 3, Aug. 5, 2014 [hereinafter Br.].
2 Office Action, Dec. 5, 2013 [hereinafter Final Action].
Appeal2015-003021
Application 11/921,270
BACKGROUND
Appellant's invention relates to "supported catalysts suitable for the
polymerizations of olefins." Spec. 1. Claim 1, the sole independent claim
on appeal, is representative:
1. A supported polymerisation catalyst system comprising
(a) a single polymerisation catalyst consisting essentially
of a metallocene,
(b) a cocatalyst,
( c) a pretreated porous support, and
( d) a polymerisable monomer;
in which prior to contact with (a) and (b) the porous support
is treated sequentially with (i) a chemical dehydration agent
which is an organoaluminium compound and (ii) a hydroxy
compound,
wherein the hydroxy compound is not a cocatalyst or
component thereof and wherein the molar ratio of hydroxy
compound to chemical dehydration agent used to pre-treat the
porous support is < 2.
Br. 15 (emphasis added).
Claims 1, 2, 4, 6, 8-12, and 18-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over U.S. Patent No. US 6,812,303 Bl
(issued Nov. 2, 2004) [hereinafter Matsushita], and further in view of Int'l
Application Publication No. WO 2005/019275 Al (published Mar. 3, 2005)
[hereinafter Jacobsen]. Final Action 3---6.
Appellant argues the claims as a group. See Br. 6-13. Therefore,
consistent with the provisions of 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) (2013 ), we limit
our discussion to independent claim 1, and all other claims stand or fall
together with claim 1.
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Application 11/921,270
DISCUSSION
The Examiner finds that Matsushita teaches all the limitations of
claim 1, see Final Action 3--4, except that it "is silent with respect to the
supported polymerization catalyst system comprising ( d) a polymerizable
monomer." Id. at 4. However, the Examiner finds that Jacobsen "teaches
mixing a metallocene catalyst with a polymerizable monomer," and that
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine the teachings of
Matsushita et al. and Jacobsen et al. for the benefit of producing
supported catalyst stable at room temperature over extended
periods of time and exhibit less deactivating kinetic profiles
than catalysts that are not contacted with a polymerizable
monomer.
Id. (citing Jacobsen 15:1-3).
Appellant compares claim 1 with the teachings of Jacobsen, and
argues that Jacobsen teaches treatment with a hydroxy compound before
treatment with a chemical dehydration agent, that in Jacobsen the hydroxy
compound is removed by calcining before contact with the chemical
dehydrating agent, and that "[t]he water solution used in Jacobsen would
inherently result in a larger molar ratio than required by the presently
claimed invention." Br. 6-7.
We do not find these arguments persuasive of reversible error. The
Examiner cited Jacobsen as "a secondary reference used to teach the
limitation of ( d) a polymer monomer," not for the specific catalyst structure,
which is taught by Matsushita. Answer 6. Obviousness depends on what
the references would have suggested to a person of ordinary skill in the art,
"not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference." In re Keller, 642
F.2d 413, 425 (CCPA 1981).
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Appeal2015-003021
Application 11/921,270
Appellant also argues that the Examiner has not established a prima
facie case of obviousness because Example 7 of Matsushita, on which the
Examiner relies, does not teach contacting the support with a hydroxy
compound, but instead teaches contacting the support with the reaction
product of a hydroxy compound and trimethylaluminium. See Br. 7-8.
Appellant argues that Matsushita's process "produces a product which is
structurally different to that obtained according to the present invention
which utilizes the claimed sequential treatment approach." Id. at 8. In
particular, Appellant argues that the difference between the process of
claim 1 and the process of Matsushita leads "to a support component having
a different surface structure to that obtained according to the cited prior
art." Id. at 9.
We have carefully considered Appellant's argument regarding the
process differences between claim 1 and Matsushita; however, we are not
persuaded of reversible error in the rejection. For a product-by-process
claim, determination of patentability is based on the product itself, even
though the claim is limited by a process. See In re Thorpe, 777 F .2d 695,
698 (Fed. Cir. 1985). Because "the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons therewith," a prima
facia case of obviousness for a product-by-process claim is established
"when the prior art discloses a product which reasonably appears to be either
identical with or only slightly different than a product claimed in a product-
by-process claim." In re Brown, 459 F.2d 531, 535 (CCPA 1972). The
burden then shifts to Appellant "to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product."
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Appeal2015-003021
Application 11/921,270
Thorpe at 698 (citing In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977)).
The Examiner finds that Matsushita teaches "adding a mixture of
aluminum compound and alcohol to a support," and shifts the burden to
Appellant to show that the Matsushita process leads to a product that is
structurally different from the product of claim 1. See Answer 7-8. We
note that the process of claim 1 and the process of Matsushita involve the
same reactants, and differ only by the order in which the reaction steps are
performed. Moreover, claim 1 puts no lower limit on the molar ratio of the
hydroxy compound to the chemical dehydration agent, see Br. 15, thus
encompassing a process that uses little or none of the hydroxy compound.
Therefore, the product described by Matsushita, Example 7, reasonably
appears to be either identical with or only slightly different than the product
of claim 1, and we find no reversible error in the Examiner's rejection. We
have considered Appellant's argument that the process of claim 1 leads to a
different surface structure. See Appeal Br. 8-9. However, because
Appellant does not support this argument by pointing to factual evidence on
this record, we find the argument unpersuasive of reversible error. See In re
Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument in the brief does not
take the place of evidence in the record.")
Appellant also argues that Matsushita teaches away from the use of a
hydroxy compound as required by claim 1. Br. 9-12. In particular,
Appellant notes that Examples 6 and 7 of Matsushita have lower yields than
other Examples 1-3, which do not use a hydroxy compound in the process.
See id. at 9-10 (citing Table 1, cols. 49-50). Thus, Appellant argues that the
teaching of Matsushita "leads away from a treatment involving a hydroxyl
compound by demonstrating that the sole use of an organoaluminum
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Appeal2015-003021
Application 11/921,270
compound is better." Id. at 11. We find this argument unpersuasive of
reversible error, because a reference that points out a preferred alternative
does not teach away if the disclosure "does not criticize, discredit, or
otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004); see also In re Gurley, 27 F.3d 551, 553-54 (Fed. Cir.
1994) ("A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use."). Appellant has not directed our attention to any
teaching of Matsushita that criticizes, discredits, or otherwise discourages
investigation into the process disclosed in Example 7.
Appellant also argues that "[t]he presently claimed invention
additionally provides improved activities and also a one-pot synthesis
procedure. . . . The one-pot synthesis has marked advantages of economics
and ease of preparation." Br. 12-13. However, Appellant does not support
this argument by citations to factual evidence, and Appellant does not show
that these advantages would have been unexpected to a person of ordinary
skill in the art. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) ("In
order for a showing of 'unexpected results' to be probative evidence of non-
obviousness, it falls upon the applicant to at least establish: (1) that there
actually is a difference between the results obtained through the claimed
invention and those of the prior art, and (2) that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention." (citations omitted)).
Therefore, by a preponderance of the evidence on this record, we are
not persuaded that the Examiner reversibly erred in deciding to reject
claim 1. For the same reasons, we find no reversible error in the Examiner's
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Appeal2015-003021
Application 11/921,270
decision to reject claims 2, 4, 6, 8-12, and 18-23, which depend from claim
1.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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