Ex parte Rebhan et al.

Board of Patent Appeals and Interferences

Sep 11, 1998

08094477 (B.P.A.I. Sep. 11, 1998)

Application for patent filed July 19, 1993.1
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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journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DAVID M. REBHAN and DAVID A. WIBBENMEYER
________________
Appeal No. 95-3233
Application No. 08/094,4771
________________
ON BRIEF
________________
Before CAROFF, KIMLIN and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 3-6
and 10-13, all the claims remaining in the present
application. Claim 10 is illustrative:
Appeal No. 95-3233
Application No. 08/094,477
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10. A process for the production of polypropylene
comprising continuously contacting liquid propylene or a
mixture comprising liquid propylene and one or more other
alpha-olefins in one or more reaction zones, under gas phase
polymerization conditions, with a catalyst system comprising
(i) a solid particulate catalyst precursor, which includes
magnesium; titanium; a halogen which is chlorine, bromine, or
iodine, or mixtures thereof; and, as an inside electron donor,
a carboxylic acid ester; (ii) a hydrocarbylaluminum
cocatalyst; and (iii) as an outside electron donor a silicon
compound containing at least one silicon-oxygen-carbon
linkage,
with the proviso that the precursor alone is carried into
the reaction zone(s) via a portion of the liquid propylene,
the amount of said portion being about 0.1 to about 11 percent
by weight based on the weight of the total liquid propylene
and the flow rate of said portion being at least 110 pounds
per hour and having a Reynolds number greater than about
20,000.
The examiner relies upon the following references as
evidence of obviousness:
Brady, III et al. (Brady) 5,093,415 Mar. 3, 1992
(filed May 19, 1987)
Kondo et al. (Kondo) 3-73,564 Nov. 22, 1991
(Japanese patent application)
Appellants' claimed invention is directed to a process
for producing polypropylene that is characterized by
appellants as an improvement over the process described in
Brady, U.S. Patent No. 5,093,415. The purported improvement
over Brady entails feeding the catalyst precursor, alone, into
the reaction zone along with a portion of the liquid propylene
Appeal No. 95-3233
Application No. 08/094,477
The § 112, first paragraph, rejection was set forth in2
the original Examiner's Answer of February 3, 1995. The
second Supplemental Examiner's Answer of February 8, 1996,
appears to be an entirely new statement of rejections of the
appealed claims, and no rejection under 35 U.S.C. § 112, first
paragraph, is set forth. However, inasmuch as the § 112
rejection has not been expressly withdrawn in either the
Supplemental Examiner's Answer of May 4, 1995 or the second
Supplemental Examiner's Answer of February 8, 1996, we will
consider the rejection as an issue presently on appeal.
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feed wherein the flow rate of the precursor/propylene has a
Reynolds number greater than about 20,000.
Appellants submit at page 2 of their third Reply Brief,
dated April 4, 1996, that "[t]he claims stand or fall
together."
The appealed claims stand rejected under 35 U.S.C. § 112,
first paragraph, as being based upon a non-enabling
disclosure. We will not sustain this rejection.2
It is well settled that the examiner bears the initial
burden of establishing lack of enablement under § 112, first
paragraph, by compelling reasoning or objective evidence. In
re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982); In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971). Here, although the examiner correctly states
that the Reynolds number is a function of four variables, the
Appeal No. 95-3233
Application No. 08/094,477
Inasmuch as the rejections over the combined teachings3
of Brady and Kondo subsume the rejection over Brady alone, we
will limit our discussion to the examiner's rejection of the
appealed claims over the collective teachings of Brady and
Kondo.
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examiner has failed to set forth objective evidence or
compelling reasoning that reasonably establishes that one of
ordinary skill in the art would be unable to practice the
claimed invention of feeding into the reaction zone a liquid
feed comprising propylene and a catalyst precursor at the
claimed Reynolds number. Accordingly, in the absence of such
evidence or reasoning, we are persuaded that one of ordinary
skill in the art would be able to attain the claimed Reynolds
number by adjusting the diameter of the feed tube or the
average velocity of the fluid feed (page 2 of Reply Brief of
February 17, 1995).
Appealed claims 10-13 and 3-6 also stand rejected under
35 U.S.C. § 103 as being unpatentable over Brady alone, Brady
in view of Kondo or Kondo in view of Brady.3
We concur with the examiner that the claimed subject
matter would have been obvious to one of ordinary skill in the
art within the meaning of § 103 in view of the collective
teachings of Brady and Kondo. Appellants apparently do not
Appeal No. 95-3233
Application No. 08/094,477
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dispute the examiner's factual determination that Brady
discloses the claimed process of producing polypropylene with
the exception of not disclosing the claimed Reynolds number
for the combined feed of catalyst precursor and propylene.
Brady does teach that the cocatalyst can be introduced into
the reaction zone while suspended in a stream of liquefied
monomer, such as propylene (column 10, lines 51-54), but Brady
is silent with respect to the Reynolds number for the
cocatalyst/monomer feed. However, since appellants contend
that the claimed Reynolds number results in low average resin
particle sizes and high resin bulk densities, and Brady
discloses at column 12, lines 12-23, an average particle size
and bulk density that essentially correspond to the values
disclosed in appellants' specification examples, we find it
reasonable to conclude that Brady employs a sufficiently high
Reynolds number to obtain the desired average particle size
and bulk density, i.e., a Reynolds number substantially as
claimed. In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
While we find it unfortunate that appellants have not
simplified the issues on appeal by making of record the actual
Appeal No. 95-3233
Application No. 08/094,477
We note that both the Brady patent and appellants'4
present invention share the same assignee, Union Carbide
Chemicals and Plastics Co., Inc.
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Reynolds number employed by Brady, we agree with the examiner4
that Kondo would have supplied the requisite motivation for
one of ordinary skill in the art to perform the Brady process
at the claimed Reynolds number for the catalyst
precursor/monomer feed. In a process for making polypropylene
by introducing a catalyst precursor along with the propylene
feed, Kondo teaches that the Reynolds number of the relevant
feed should be greater than 3,000 which, as noted by the
examiner, encompasses the claimed value of 20,000. It is well
settled that where patentability is predicated upon a change
in a condition of a prior art process, such as here, a
purported change in Reynolds number, that change must at least
be critical, i.e., it must lead to a new or unexpected result,
and the burden of establishing such criticality rests on the
applicant. See In re Ranier, 377 F.2d 1006, 1010, 153 USPQ
802, 805 (CCPA 1967); In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955). As stated by our reviewing court in In
re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed.
Cir. 1990):
Appeal No. 95-3233
Application No. 08/094,477
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The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims . . . . These cases have consistently held
that in such a situation, the applicant must show
that the particular range is critical, generally by
showing that the claimed range achieves unexpected
results relative to the prior art range. [Citations
omitted].
Consequently, in the present case, appellants have the burden
of establishing with objective evidence that operating the
Brady process at the claimed Reynolds number produces
unexpected results viz-à-viz a Reynolds number that one
skilled in the art would have used in the Brady process.
While appellants invite comparison of specification Runs
A and D with Runs B and C; Run E with Run F; Run G with Run H;
and Run I with Run J, appellants have not proffered any
objective evidence which provides a meaningful side-by-side
comparison with the closest prior art, i.e., appellants have
not presented a comparison of processes within the scope of
the appealed claims and processes fairly taught by either
Brady or Kondo. In re Johnson, 747 F.2d 1456, 1461, 223 USPQ
1260, 1263-64 (Fed. Cir. 1984). Moreover, we find it
significant that all the runs in appellants' specification
utilize a Reynolds number considerably greater than the
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Application No. 08/094,477
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claimed 20,000. The smallest Reynolds number of the
specification runs is 30,000 (Run I), which is 150 percent
greater than the claimed 20,000. Hence, the data is not
commensurate in scope with the degree of protection sought by
the appealed claims. In re Grasselli, 713 F.2d 731, 743, 218
USPQ 769, 778 (Fed. Cir. 1983).
We have not ignored appellants' argument that Kondo uses
active catalysts together with the propylene feed, whereas
appellants use precursor alone with the propylene feed.
However, as correctly explained by the examiner, Kondo
discloses at page 6 of the English translation that a catalyst
component alone, a precursor, can be fed along with the
monomer feed (lines 17-24). Also, although appellants contend
that "Kondo uses all of the liquid propylene in the catalyst
feed" (page 3 of third Reply Brief), claim 1 of Kondo recites
that the catalyst is introduced together with "at least part
of the total amount of alpha-olefin to be fed."
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
Appeal No. 95-3233
Application No. 08/094,477
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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).
AFFIRMED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
EDWARD C. KIMLIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
CLM
Appeal No. 95-3233
Application No. 08/094,477
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Union Carbide Chemicals
& Plastics Co., Inc.
Law Dept. E205
39 Old Ridgebury Road
Danbury, CT 06817-0001