Ex Parte Morini et al

Patent Trial and Appeal Board

Nov 27, 2012

11887530 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/887,530 09/28/2007 Giampiero Morini 124-197USFE6250 6695
74275 7590 11/27/2012
DILWORTH IP, LLC
2 CORPORATE DRIVE, SUITE 206
TRUMBULL, CT 06611
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
11/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte GIAMPIERO MORINI, ISABELLA CAMURATI, TIZIANO
DALL’OCCO, DARIO LIGUORI and GIANNI VITALE
____________

Appeal 2011-007073
Application 11/887,530
Technology Center 1700
____________

Before ANDREW H. METZ, TERRY J. OWENS, and
JEFFREY T. SMITH, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 16 through 19, which are all the claims remaining
in the application. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
Appellants’ invention is directed to solid catalyst components suitable
for polymerizing olefins. The solid catalyst components may be converted to
catalysts which are useful in the copolymerization of ethylene to prepare, in
high yields, crystalline polymers having a medium-narrow Molecular
Appeal 2011-007073
Application 11/887,530

2
Weight Distribution (MWD). The width of the MWD for ethylene polymers
is generally expressed as melt flow ratio F/E as measured according to
ASTM D-1238. According to Appellants, catalyst components for preparing
ethylene polymers having a narrow MWD are described in the prior art but
the process for preparing the catalyst components useful for preparing
catalysts for making the narrow MWD polymers is long and the
polymerization activity of catalysts so-prepared is alleged to be “low.” A
“simpler” process for preparing catalyst components useful for preparing
catalysts for preparing narrow MWD polymers is described in US Patent
Number 4,220,554. Therein, the catalysts are described as prepared by
reacting at high temperatures a large excess of TiCl4 with catalyst precursors
of the formula MgCln(OR)2-n wherein 0≤n≤2 in the presence of an internal
electron donor. According to Appellants, the catalysts obtained by said
process exhibit hydrogen response and activity that is not “satisfactory.”
Appellants disclose solid catalyst components comprising Ti, Mg,
halogen and OR1 groups, wherein R1 is a C1-C12 hydrocarbon group
optionally containing heteroatoms.1 The catalyst components have an
OR1/Ti molar ratio higher than 1.5.2 The amount of titanium with respect to
the total weight of said solid catalyst component is higher than 4%.
Specification, page 2, line 14 through page 3, line 8. Alternatively, the
catalyst components having the recited chemical features may be described
as the product obtainable by reacting a titanium compound having at least a

1 Appellants have limited the appealed claims to R1 is ethyl (a C2
hydrocarbon).
2 Appellants have limited the appealed claims to a OR1/Ti ratio higher than
2.
Appeal 2011-007073
Application 11/887,530

3
Ti-Cl bond with a catalyst precursor of the formula MgCln(OR1)2-n wherein n
is from 0.5 to 1.5 and (OR1) is as defined above. Specification, page 3, lines
10 through 16. The solid catalyst components are converted to catalysts for
the polymerization of olefins by reacting them with organoaluminum
compounds according to known methods. Specifically, the catalysts are
obtained by reacting the solid catalyst components with an alkyl aluminum
compound and, optionally, an external electron donor. Specification, page 5,
lines 7 through 15.
The catalyst components of the invention are useful for obtaining
catalysts which are useful for preparing ethylene polymers having a narrow
MWD, preferably lower than 40, more preferably lower than 35 and in some
cases lower than 30. Specification, page 6, line 27 through page 7, line 1.
Claim 16, the only independent claim before us for our consideration,
is believed to be adequately representative of the appealed subject matter
and is reproduced below for a more facile understanding of the claimed
invention.
16. Catalyst components for polymerizing olefins comprising
solid catalyst components, the solid catalyst components
comprising Ti, Mg, halogen, and OR1, wherein the amount of
Ti is higher than 4% by weight, with respect to the total weight
of the solid catalyst components, R1 is ethyl, and the solid
catalyst components comprise a OR1/Ti molar ratio higher than
2, with the proviso that when the OR1/Ti molar ratio is equal to
or lower than 3, the solid catalyst components comprise a
Mg/Ti molar ratio less than 4, and when the OR1/Ti molar ratio
is higher than 4, the solid catalyst components comprise a
Mg/Ti molar ratio equal to or higher than 4, and when both the
OR1/Ti molar ratio and the solid catalyst components comprise
a Mg/Ti molar ratio that range from 3 to 4, at least one of the
following equations is satisfied:
Appeal 2011-007073
Application 11/887,530

4

1) (Mg/Ti) - (OR1/Ti) ≥ 0.5;
2) (Mg/Ti) + (OR1/Ti) ≥ 7;

the solid catalyst components obtained by reacting a titanium
compound comprising at least one Ti-Cl bond with a catalyst
precursor of the formula MgCln(OR1)2-n, wherein n is from 0.5
to 1.5; and R1 is ethyl.

The reference of record which is being relied on by the Examiner as
evidence of obviousness is:
Sacchetti et al. (Sacchetti) US 5,726,261 Mar. 10, 1998
THE REJECTIONS
Claims 16 through 19 stand rejected as being unpatentable under
35 U.S.C. § 103(a) as the claimed subject matter would have been obvious
from the disclosure of Sacchetti.
OPINION
Appellants’ invention is directed to a catalyst component that may be
converted to a catalyst useful for the polymerization of olefins by reacting
the catalyst component with “organoaluminum compounds according to
known methods.” Specification, page 5, lines 7 through 9. Appellants’
catalyst components are defined in terms of their Ti, Mg, halogen and OR1
content and the various relationships between the ratio of OR1 to Ti, the Mg
to Ti molar ratio and also to the total Ti content in weight percent of the final
product. Alternatively3, the catalyst components are claimed in so-called
“product-by-process” claim terminology, that is, they are claimed as being
obtained by reacting a titanium compound with a catalyst precursor. See

3 See page 3, lines 10 through 13 of Appellants’ Specification.
Appeal 2011-007073
Application 11/887,530

5
Claim 16. For reasons which follow, we find that the Examiner has made out
a prima facie case of obviousness and we do not find Appellants’ arguments
to be persuasive in establishing that the Examiner erred in her conclusion.
We find that Sacchetti describes catalyst components useful for
preparing catalysts for polymerizing olefins. In her Answer, the Examiner
describes where in Sacchetti’s disclosure the various limitations in the
claims are found and explains why Sacchetti’s disclosure meets the
limitations in claim 16. Specifically, the Examiner observes that Sacchetti
describes a catalyst component useful for preparing catalysts for
polymerizing olefins comprising Mg, Ti, halogen and an OR group where R
can be an alkyl group having from 1 to 18 carbon atoms. The Examiner
observes that in the claimed OR1 group R1 is ethyl, a C2 alkyl group within
Sacchetti’s disclosure. The Examiner further observes that Sacchetti
discloses an OR to Ti mole ratio of greater than 0.5 which includes the claim
limitation of “higher than 2” and further notes that in Example 1 from
column 7 the molar ratio of OR to Ti is 3.4 and the Mg to Ti ratio is 9.8
which meet the “proviso” condition recited in claim 16. The Examiner
continues by noting that Sacchetti discloses in column 4, line 27 that the Ti
percentage is from 1 to 12% which meets the claim limitation of “higher
than 4 % by weight.
Appellants do not challenge any of the Examiner’s factual findings
concerning the disclosure in Sacchetti but instead argue that alleged
differences between their claims and data from the examples culled from
Sacchetti’s disclosure mandates that we should reverse the Examiner’s
rejection. We disagree.
Appeal 2011-007073
Application 11/887,530

6
We find that each of Appellants’ claim limitations in terms of the
catalyst components’ Ti, Mg, halogen and OR1 content and the various
relationships between the ratio of OR1 to Ti, the Mg to Ti molar ratio and to
the total Ti content of the final product are encompassed by or included in
Sacchetti’s disclosure. Coupled with Sacchetti’s disclosure that catalyst
components having such limitations or values are useful for preparing
catalysts by reacting the catalyst components with aluminum alkyls and that
catalysts so-prepared are useful in the preparation of olefins, particularly
linear low density polyethylenes (LLDPE), we find that the Examiner has
made out a prima facie case of obviousness. Indeed, in various examples in
Sacchetti’s disclosure polymers having narrow molecular weight
distributions (for Example 28.8 in Example 1; 28 in Example 2; 30 in
Example 3) are obtained that are within Appellants’ disclosed preferred
molecular weight distributions. See Specification, page 6, lines 29 through
page 7, line 1.
We have not overlooked Appellants’ various arguments made in their
Brief urging we reverse the Examiner’s rejection but find Appellants’
arguments to be unpersuasive. As product-by-process claims Appellants’
claims are claims to the product not the process of making the product
although how the product is prepared is relevant to the inquiry concerning
the nature of the product obtained.4 Thus, Appellants’ argument that

4 “[E]ven though product-by-process claims are limited by and defined by
the process, determination of patentability is based on the product itself. The
patentability of a product does not depend on its method of production. If the
product in the product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
Appeal 2011-007073
Application 11/887,530

7
Sacchetti’s precursor is different from the precursor used by Appellants to
prepare the claimed catalyst component fails to address what differences, if
any, exist between Sacchetti’s catalyst component prepared from their
precursor and Appellants’ catalyst component. Additionally, Appellants’
characterization of the claimed precursor and Sacchetti’s on page 3 of
Appellants’ Brief finds no factual basis in the record and is considered to be
attorney argument.
On pages 4 through 7 of their Brief, Appellants admit that Sacchetti
discloses OR to Ti molar ratios greater than 0.5 and that the claimed ratio of
“higher than 2” is described by Sacchetti’s range but argue that Sacchetti’s
examples direct the person of ordinary skill in the art to lower ratios.
Appellants go on to argue that none of the compositions from Sacchetti’s
examples meet Appellants’ claim limitations. Appellants, after conceding
the examples from Sacchetti’s disclosure, and Appellants claim limitations
are “not easy to compare directly,” also urge that their catalyst components
yield catalysts which give unexpectedly improved (high) polymerization
activities compared with catalysts prepared from the claimed catalyst
components. We are not persuaded by Appellants’ arguments.
In comparing the claimed invention to the prior art it is improper to
focus only on some of the examples in the disclosure on which the Examiner
relies to reject the claims. Rather, the entire disclosure must be considered
for all that it teaches and suggests and the determination of obviousness
must be based on that analysis not simply select examples. We may not

product was made by a different process.” In re Thorpe, 777 F.2d 695, 697,
(Fed. Cir. 1985) (citations omitted)
Appeal 2011-007073
Application 11/887,530

8
ignore the clear and unequivocal disclosure in Sacchetti that, for example,
the R moiety in the OR functionality may include hydrocarbons having two
carbon atoms such as ethyl groups. Rather we consider the disclosure in
Sacchetti to mean that any hydrocarbon group having from 1 to 18 carbon
atoms will give OR groups which yield catalyst components useful for
preparing ethylene polymerization catalysts. Similarly, we are not free to
ignore the disclosure in Sacchetti, for example, that the percent by weight Ti
in the catalyst components may be up to 15% by weight, preferably 1 to 12
% by weight. As we have observed above, Appellants have not challenged
any of the Examiner’s factual findings.
Finally, we shall address Appellants’ use of “Table1” in their brief in
support of their arguments. We find the information in Table is not
commensurate in scope with the broad disclosure of Sacchetti. As we stated
above, Sacchetti’s disclosure is not limited to their examples and Table 1 is
limited only to Sacchetti’s examples. Because Appellants’ do not address in
Table 1 the entire disclosure of Sacchetti but only some of the examples we
find that the proffered comparison is not truly comparable with the closest
prior art. Finally, Appellants suggest in their argument that using their
catalyst components to prepare catalysts useful for the polymerization of
olefins yields “unexpected” or improved results in polymerization activity
and molecular weight distribution. In the first instance, what the nature of
the catalyst being compared in Table 1 is not clear. Moreover, after directing
our attention to Example 8 in Sacchetti and Examples 10 and 14 from
Appellants’ disclosure Appellants concede that the “experiments are not
easy to compare directly.” We agree with Appellants’ characterization of the
Appeal 2011-007073
Application 11/887,530

9
proposed comparison and for that additional reason find the proffered
comparison not to be probative.
The decision of the Examiner 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)(1)(iv).
AFFIRMED

cam