Ex Parte Moman et al

Board of Patent Appeals and Interferences

Aug 24, 2006

10227075 (B.P.A.I. Aug. 24, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte AKHLAQ MOMAN, ATIEH ABU-RAQABAH, ORASS HAMED,
and RAJU RAGHAVAN
__________

Appeal 2006-2487
Application 10/227,075
Technology Center 1700
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Decided: August 24, 2006
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Before KIMLIN, PAK, and FRANKLIN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Final Rejection of clams 1-3, 8, 15, 17, 19, 21, 23,
25, 27, 29, 31, 33, 35, 40, 42, 44, 46, and 48. Claim 1 is illustrative:
1. A process for homopolymerization of an olefin or
copolymerization of at least one olefin with one alpha-olefin to produce
polymers which comprises contacting the olefin or the olefin and alpha-
olefin in the absence of an electron donor with a catalyst composition in the
presence of a cocatalyst, said catalyst composition prepared according to a
process consisting essentially of the sequential steps of:

Appeal 2006-2487
Application 10/227,075

2
(a) treating PVC-based particles with an organomagnesium compound
in an inert hydrocarbon solvent; and

(b) contacting said treated PVC-based particles of step (a) with a
transition metal compound selected from the group consisting of TiCl4,
VCl4, and ZrCl4, in the absence of an electron donor.

The Examiner relies upon the following reference as evidence of
obviousness:
Sasaki US 5,051,484 Sep. 24, 1991
All of the appealed claims stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sasaki.
Appellants submit at page 5 of the principal Brief that all the appealed
claims “stand or fall together.” Accordingly, all the appealed claims stand or fall
together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments set forth in the
principal and Reply Briefs on appeal. However, we are in complete agreement
with the Examiner that the claimed subject matter would have been obvious to one
of ordinary skill in the art within the meaning of Section 103 in view of the applied
prior art. Accordingly, we will sustain the Examiner’s rejection as set forth in the
Answer, which we incorporate herein, and we add the following for emphasis only.
As explained by the Examiner, Sasaki, like Appellants, discloses a process
for polymerizing olefins by contacting the olefin in the absence of an electron
donor with a catalyst composition prepared by treating PVC-particles with an
organo magnesium compound in a hydrocarbon solvent, and treating the PVC-
particles with a transition metal compound, e.g., TiCl4. Consequently, we have no
doubt that one of ordinary skill in the art would have found it prima facie obvious
Appeal 2006-2487
Application 10/227,075

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to form a homopolymer or copolymer of an olefin in accordance with processes
within the scope of claim 1 on appeal. Appellants submit that Sasaki’s disclosure
that the porous carrier can be “an organic porous polymer selected from the group
consisting of polystyrene, polyacrylic ester, polyacylonitrile; polyvinylchloride and
polyolefin” (see claim 1) “encompass thousands of potential carriers” (Br. 5-6).
However, as properly pointed out by the Examiner, Sasaki expressly teaches that
polymer beads of polyacylonitrile are preferable, and that “those of polystyrene,
styrene-divinylbenzene copolymer and polyvinylchloride are more preferable”
(col. 8, ll. 45-47). Consequently, inasmuch as PVC is one of the “more preferable”
materials taught by Sasaki, we hardly agree with Appellants’ characterization of
Sasaki as teaching PVC in a laundry list of polymer particles. Clearly, one of
ordinary skill in the art is directed by Sasaki to do precisely what Appellants have
done, namely, select PVC as a suitable porous polymeric carrier for the catalyst.
We are also not persuaded by Appellants’ argument that Example 24 of
Sasaki teaches one of ordinary skill in the art that “transition metal compounds are
to be added to PVC carriers in conjunction with an electron donor
(tetraethoxysilane in the Example 24)” (Br. 6, third paragraph). We find that the
Examiner has effectively refuted this argument by pointing out that the first listed
method among the five disclosed by Sasaki for making the catalyst comprises
treating the porous polymer carrier with an organo magnesium compound, and
then treating it with TiCl4 in the absence of an electron donor. We fully concur
with the Examiner that one of ordinary skill in the art would have understood that
Sasaki teaches the use of an electron donor as an option.
Appeal 2006-2487
Application 10/227,075

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Also, Appellants have not demonstrated that processes within the scope of
the appealed claims, performed without an electron donor, achieve the benefits
ascribed to the use of an electron donor by Sasaki. It is well settled that the
elimination or omission of a feature taught by the prior art along with its attendant
function or advantage is a matter of obviousness for one of ordinary skill in the art.
In re Thompson, 545 F.2d 1290, 1294, 192 USPQ 275, 277 (CCPA 1976); In re
Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9, (CCPA 1975). Consequently, even if it
were so that Sasaki’s processes use an electron donor, Appellants’ claimed non-use
of an electron donor would have been prima facie obvious to one of ordinary skill
in the art.
As a final point, we note that Appellants base no argument on objective
evidence of nonobviousness, such as unexpected results, which would serve to
rebut the prima facie case of obviousness established by the Examiner.
In conclusion, based on the foregoing and the reasons well-stated by the
Examiner, the Examiner’s decision rejecting the appealed claims is affirmed.

Appeal 2006-2487
Application 10/227,075

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

KRAMER LEVIN NAFTALIS & FRANKEL, LLP
INTELLECTUAL PROPERTY DEPARTMENT
1177 AVENUE OF THE AMERICAS
NEW YORK, NY 10036