Ex Parte Sandell et al

Board of Patent Appeals and Interferences

May 20, 2010

10953263 (B.P.A.I. May. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID JACK SANDELL, MARJORIE E. KING, and
FRED DAVID EHRMAN
____________

Appeal 2008-002988
Application 10/953,263
Technology Center 1700
____________

Decided: May 20, 2010
____________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge,
ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge, and
PETER F. KRATZ, Administrative Patent Judge.

KRATZ, 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 1-45. We have jurisdiction pursuant to
35 U.S.C. § 6(b).

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Appellants’ invention is directed to a polymerization method, such as
olefin polymerization, wherein a leading indicator (LI) is calculated and/or
an LI function is obtained for calculating the LI (Spec., paras. 0002, 0022,
and 0024). For example and according to Appellants, ethylene can be
copolymerized with 1-hexene together with added hydrogen employing a
bimetallic catalyst system in a fluidized bed while a leading indicator is
employed for reaction parameter adjustment (Spec, 0015). In one
embodiment, a specified leading indicator function is obtained; the LI value
(calculated via the LI function) is compared to a target value; a reaction
parameter is adjusted in response to a difference in the LI value and target
value; and, a polymer product property is controlled (Spec., paras. 0013 and
0015). According to Appellants, employing the disclosed leading
indicator(s) in polymerizing olefins allows for “rapid recovery from
unplanned variable changes” and the making of purposeful changes in
reaction variables in producing polymers of different properties with quicker
and less expensive transitions in so doing (Spec. 0022).
In another embodiment, a method of achieving control of a leading
indicator is disclosed as being contemplated wherein a LI is calculated “such
that the numerator and denominator have the same dynamic response to
process changes” (Spec. 0014). The LI is calculated in a manner to take
time delays in obtaining measurements used in determining gas ratios (GR)
into account, a process sensitive variable for controlling the LI is chosen, the
process sensitive variable is manipulated, and a polymer product is removed
(Spec., paras. 0014 and 0026). Claims 1, 15, 26, 27, and 45 are the only
independent claims before us. Claims 1, 15, 19, and 26 are illustrative and
reproduced below:
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1. A method of olefin polymerization, the method comprising:

(a) determining a flow ratio to a polymerization reactor, FR1, of a
comonomer flow rate to a monomer flow rate provided to the reactor;
determining the concentration ratio, GR1, of the concentration of the
comonomer to the concentration of the monomer in a recycle stream of the
reactor,

(b) obtaining a leading indicator function, LI, defined by:

where GR1 is thc present value of the comonomer/ethylene
concentration ratio at time T in the reactor, as determined by analysis
of the recycle stream;

where FR1 is the present value of the flow ratio of the comonomer
flow rate to monomer flow rate into the reactor, expressed as an
exponentially weighted moving average (EWMA) at time T;

where FR2 is the instantaneous flow ratio td minutes prior to time T;
where FR3 is an EWMA using the comonomer residence time td
minutes prior to time T-1;

where td is the delay time for recycle gas analysis;

where β = 1-exp(-T/(comonomer residence time) = 1- exp(-Δt/τ);

where Δt = the time step chosen to update the LI calculation;

where τ = the residence time in the reactor of the comonomer that is
used to calculate the LI with the proviso that the comonomer
dissolved in the polymerized olefin is included in said comonomer
used to calculate the LI; (c) comparing the LI to a target value;
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(d) adjusting at least one reactor parameter in response to a deviation
between the LI and the target value; and
(e) controlling a polymer product property.
15. A method to achieve control of a leading indicator in a gas phase
polymerization reaction in a polymerization reactor, comprising:
(a) calculating a leading indicator, (LI), said LI comprising a numerator and
a denominator wherein the numerator and demominator [sic.] have different
response times to process changes, such that the measured values of the
numerator and the denominator are in phase relative to their response times
to process changes;
(b) choosing at least one process sensitive variable to manipulate to control
said leading indicator (LI);
(c) manipulating the process sensitive variable; and
(d) removing a polymer product.
19. The method of claim 15, wherein said leading indicator, LI is
determined by:

where GR1 = present value of the comonomer/ethylene concentration ratio at
time T in the reactor, as determined by analysis of a recycle stream of said
reactor;

FR1 is the present value of the flow ratio of the comonomer flow rate
to monomer flow rate into the reactor expressed as an exponentially
weighted moving average (EWMA) at time T;

where FR2 is the instantaneous Flow Ratio td minutes prior to time
step T;

where FR3 is an EWMA using the comonomer residence time td
minutes prior to time step T- I;
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where td is the delay time for recycle gas analysis;

where β = 1-exp(-T/(comonomer residence time) = 1- exp(-Δt/τ);

where Δt = the time step chosen to update the LI calculation;

where t = the residence time of the comonomer that is used to
calculate the LI, with the proviso that the comonomer dissolved in the
polymer product is included in said comonomer used to calculate the
LI;

said method further comprising

(c) comparing LI to a target value; and

(d) adjusting at least one reactor parameter in response to a deviation in LI
and the target value.

26. A process for polymerizing olefins in a gas-phase fluidized bed
polymerization reactor, the process comprising:

(a) determining a flow ratio into the polymerization reactor, FR1, of a
comonomer flow rate to a monomer flow rate provided to the reactor;
determining the concentration ratio, GR1, of the comonomer concentration to
the monomer concentration in a recycle gas stream of the reactor,
(b) obtaining a leading indicator function, LI, defined by:

where GR1 is the present value of the comonomer/ethylene
concentration ratio at time T in the reactor, as determined by analysis
of the recycle gas stream;

where FR1 is the present value of the flow ratio of the comonomer
flow rate to monomer flow rate into the reactor, expressed as an
exponentially weighted moving average (EWMA) at time T;
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where FR2 is the instantaneous flow ratio td minutes prior to time T;

where FR3 is an EWMA using the comonomer residence time td
minutes prior to time T-1;

where td is the delay time for recycle gas analysis;

where β = 1-exp(-T/(comonomer residence time) = 1- exp(-Δt/τ);

where Δt = the time step chosen to update the LI calculation;

where τ = the residence time in the reactor of the one of comonomer
that is used to calculate the LI, with the proviso that the comonomer
dissolved in a polymer made in the olefin polymerization, is included
in said comonomer used to calculate the LI;

(c) comparing the LI to a target value; and
(d) adjusting at least one reactor parameter in response to a deviation
between the LI and the target value;
wherein said polymerization comprises said ethylene, said
comonomer selected from 1-butene, 1-hexene or combinations
thereof, and hydrogen;
wherein the olefin polymerization is catalyzed by a supported
bimetallic catalyst system comprising at least one metallocene catalyst
and at least one non-metallocene transition metal catalyst, and
wherein said polymer product comprises a molecular weight
distribution, a composition distribution, or both a molecular weight
distribution and a composition distribution, that are broad or bimodal,
or both broad and bimodal;
wherein the at least one metallocene catalyst compound is (RCp)2-
MX2, wherein Cp is a substituted cyclopentadienyl ring, M is
zirconium; R is a n-butyl, and X is fluoride;
wherein the at least one reactor parameter is selected from the group
consisting of monomer feed rate, comonomer feed rates, catalyst feed
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rates, cocatalyst feed rates, hydrogen feed rate, reactor temperature,
monomer partial pressure, comonomer partial pressure, hydrogen
partial pressure, water feed rate, carbon dioxide feed rate, impurity
feedrate, condensing agent feedrate, isopropyl alcohol feedrate,
oxygen feedrate, and combinations thereof.
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Lue US 6,207,606 B1 Mar. 27, 2001

The Examiner maintains the following ground of rejection:
Claims 1- 45 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lue.
We reverse the stated rejection. We introduce a new ground of
rejection of independent claim 15 and the claims depending thereon (claims
16-25 and 38-44) under the second paragraph of 35 U.S.C. § 112. Also, we
introduce new grounds of rejection of claim 15-18 under the first paragraph
of 35 U.S.C. § 1121
Claims 1, 15, 26, 27, and 45 are the only independent claims before
us. Appellants present arguments traversing the Examiner’s obviousness
rejection of claims 1-45 directed at: (1) claims 1-45 taken together as a
group, (2) claims 1-14, and 19-45 taken together as a sub-group, and claims
15-18 taken together as another sub-group (App. Br. 8-17). For reasons set

1 37 C.F.R. § 41.50(b). The exercise of the discretion to introduce a new
ground as to some claims should not be taken one way or the other as to
whether another ground of rejection may or may not be applicable to any of
the pending claims or that the new ground introduced may or may not be
applicable to other claims of the Application. See Manual of Patent
Examining Procedure (MPEP), 8th ed., rev. July 2008, § 1213.02 (“Since the
exercise of authority under 37 C.F.R. § 41.50(b) is discretionary, no
inference should be drawn from a failure to exercise that discretion”).
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forth below in presenting the new ground of rejection, we consider rejected
claims 15-25 and 38-44 separately from the remaining rejected claims in
deciding this appeal. We start with claims 1-14, 26-37, and 45; thereafter,
we consider independent claim 15 and the claims depending thereon (claims
16-25 and 38-44).

I. Claims 1-14, 26-37, and 45
The Examiner has found that “Lue et al. do not specifically disclose
the leading indicator as claimed” (Ans. 4). However, the Examiner
maintains that “the examiner still has a reasonable basis to believe that the
claimed function LI is generically broadly encompassed by the disclosure to
[sic.] Lue et al.” based on data presented in Table 1 of Lue (Ans. 4).
The Examiner asserts that:
Further, regarding the claimed leading indicator,
appellants must recognize that a mathematical equation itself is
not [a] patentable feature. Therefore, for examination purposes,
the claimed leading indicator is used to define the scope or the
range on how the flow rate of hydrogen and monomer are being
changed as claimed. Since the scope or the range as described
by the claimed leading indicator is within the scope of the
polymerization process of Lue et al., motivated by the
expectation of success of developing the process of Lue et al., it
would have been obvious to one of ordinary skill in art to
follow the teachings of Lue et al. to obtain a polymerization
process with hydrogen and monomer flow rates that are within
the scope of claims 1-45.
Ans. 4-5.
Contrarily, Appellants contend, inter alia, that (1) Lue does not
inherently teach or otherwise suggest to one of ordinary skill in the art an LI
function involving a ratio of a flow ratio to a concentration ratio as recited as
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part of the claimed method; and (2) the mathematical formula (LI function)
cannot be ignored in assessing the obviousness of the claimed method
because the claims must be considered as a whole including the subsequent
steps wherein a calculated LI is compared to a target value and an
adjustment of a reactor parameter is conducted in response thereto (App. Br.
9-15; Reply Br. 2-6).
Consequently, the principal issues before us are:
Has the Examiner established the obviousness of the claimed subject
matter over Lue by (1) expressing beliefs that Lue broadly encompasses the
LI function that is part of the claimed subject matter and/or (2) asserting the
non-patentable nature of the claimed mathematical formula coupled with
arguing that overlapping hydrogen and monomer flow rates exist between
Lue and the claimed process?
We answer these questions in the negative.

FINDINGS OF FACT
In addition to findings of fact set forth elsewhere in this Opinion, we
note the following findings.
Lue is directed to a mixed catalyst and a method of making same, and
a process of using the catalyst in olefin polymerization (col. 1, ll. 5-15, col.
2, l. 65 – col. 4, l. 27).
Lue discloses the olefin polymerization reaction can employ ethylene
as a monomer and a comonomer such as hexene-1 (col. 14, ll. 23-31).
Lue teaches that the polymerization can be carried out using a typical
gas phase fluidized bed process wherein a gaseous stream including one or
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more monomers is recycled back through the fluidized bed with monomer
added to replace polymerized monomer (col. 14, ll. 32-49).
Lue discloses that polymer produced by the process can have a range
of densities, narrow composition and molecular weight distributions, and be
characterized by a range of melt indexes and melt index ratios (col. 15, l. 42-
col. 16, l. 31).
Lue furnishes examples wherein ethylene is polymerized in a
fluidized bed reactor and introduced with a co-monomer comprising
Hexene-1 and hydrogen into a recycle gas line of the reactor (col. 18, ll. 25-
35).
Lue (col. 18, ll. 35-42) explains that:
The individual flow rates of ethylene, hydrogen, and
comonomer were controlled to maintain fixed composition
targets. The ethylene concentration was controlled to maintain
a constant ethylene partial pressure. The hydrogen was
controlled to maintain a constant hydrogen to ethylene mole
ratio. The concentration of all of the gases were measured by
an on-line chromatograph to ensure relatively constant
composition in the recycle gas stream.

Lue presents reaction data for comparative Examples 1-5 and
Examples 6-9 in Tables 1 and 2 and product data in Table 3. Tables 1 and 2
include reaction information including hydrogen to ethylene concentration
ratio and hexane to ethylene concentration ratio values, ethylene and hexene
mole percent values, and other information.
Lue does not explicitly describe (1) using a leading indicator or
leading indicator function for calculating a leading indicator (LI) based on a
ratio of a flow ratio (FR) to a recycle stream concentration ratio (GR) of co-
monomer to monomer or hydrogen to monomer; (2) comparing the
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calculated LI to a target value, and (3) adjusting a reaction parameter based
on a deviation between the LI and the target value.

PRINCIPLES OF LAW
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984); see also Ex Parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (Precedential).
An Appellant may attempt to overcome an Examiner’s rejection on
appeal to the Board by submitting arguments and/or evidence to show that
the examiner made an error in either (1) an underlying finding of fact upon
which the final conclusion was based, or (2) the reasoning used to reach the
legal conclusion. See Frye, 94 USPQ2d at 1075. The panel then reviews the
rejection for error based upon the issues identified by Appellant, and in light
of the arguments and evidence produced thereon. See Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992); See also Frye, 94 USPQ2d at 1075.

ANALYSIS
Each of the independent claims (claims 1, 26, 27, and 45) in this sub-
grouping of the rejected claims is directed to an olefin polymerization
method which includes steps comprising:
1. Determining a ratio of a comonomer or a hydrogen flow rate to a
monomer flow rate that is provided to a reactor and determining a ratio of
hydrogen or comonomer concentration to monomer concentration in a
reactor recycle gas stream;
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2. Obtaining a specified leading indicator function as set forth in
claims 1, 26, 27, or 45 that is used to calculate an LI ;
3. Comparing the LI to a target value; and
4. Adjusting at least one reactor parameter in response to a deviation
between the LI and a target value.
We agree with the Examiner that Lue teaches or suggests an olefin
polymerization process wherein individual flow rates of ethylene, hydrogen
and hexene feed are controlled to achieve a constant or fixed composition
target (Ans. 4-5; Lue, col. 18, ll. 34-42 and Tables 1 and 2). However, as the
Examine has recognized, Lue does not explicitly disclose the specified
leading indictor employed in the process of Appellants’ rejected independent
claims 1, 26, 27 or 45 (Ans. 4).
Even if we could agree with the Examiner’s conclusive assertion that
Lue provides a teaching of polymerizing olefins that broadly encompasses or
is generic to the claimed process at issue here, the Examiner bears the
burden of presenting a sustainable rationale as to either (1) why the claimed
process would have been inherently taught by Lue or why it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify Lue’s method to include a reactor parameter adjustment responsive
to a deviation between a target value and a leading indicator (LI) obtained
via a comparison step as the involved claims require, wherein the LI is
calculated using the formula as specified in independent claims 1, 26, 27,
and 45.
Here, the Examiner’s conclusive assertions about range overlap, a
non-patentable mathematical equation, and an encompassing disclosure in
Lue are clearly insufficient to make out a credible case with respect to an
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inherent teaching of a process corresponding in all of the requirements of
any of the independent claims 1, 26, 27, or 45 by Lue (see, e.g., App. Br.
10). Indeed, the Examiner does not separately address any of these
independent claims in maintaining the obviousness rejection. Inherency
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Also, the Examiner’s criticism of the mathematical leading indicator
formula specified in claims 1, 26, 27, and 45 as being not patentable by itself
is misplaced because other steps are part of the claimed subject matter as a
whole. The Examiner has presented an obviousness rejection for our review,
not a rejection under 35 U.S.C. § 101 detailing how the Examiner considers
any of the affected claims to be drawn to ineligible subject matter.
In addition, the Examiner has not reasonably articulated how Table 1
and the Examples furnished by Lue would have led an ordinarily skilled
artisan to the claimed subject matter as a whole including the reaction
parameter adjustment step as required by claims 1, 26, 27, and 45. In this
regard, the Examiner has correctly determined that Lue discloses controlling
monomer and hydrogen flow rates individually so as to achieve fixed
composition targets (Ans. 3-4). However, the Examiner does not
persuasively articulate how Lue’s broadly disclosed individual control of
these feed rates, for the purpose of maintaining fixed composition targets,
and/or Lue’s teaching of a constant hydrogen to ethylene mole ratio (col. 18,
ll. 38-40) would have directed an ordinarily skilled artisan toward arrival at
Appellants’ leading indicator formula and manner of adjusting reactor
parameters in response to deviations of a calculated LI from a target LI
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value. As Appellants essentially argue, the Examiner’s attempt at finding
motivation for the necessary modifications to Lue’s process based on a
conclusive assertion of “expectation of success” is a non-starter by itself
(App. Br. 15). Furthermore, the Examiner’s rebuttal assertion of the ease of
performing such control is incomplete in furnishing a rationale for the
necessary modification to Lue for arrival at the claimed subject matter and,
in any event, it is not substantiated with evidence (Ans. 9).
In sum, the Examiner has not presented a sustainable basis for the
obviousness rejection because the Examiner has not furnished sufficient fact
findings respecting the relied upon prior art disclosures coupled with a
detailed correlation thereof with all of the claim requirements. In this
regard, “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness” being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on § 103(a) must rest on a factual
basis with these facts being interpreted without impermissible hindsight
reconstruction of the invention from the prior art. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
On this record, we reverse the Examiner’s obviousness rejection of
the appealed claims 1-14, 26-37, and 45.

II. Claims 15- 25 and 38-44
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a § 103
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rejection of the claims can be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. In re Steele, 305
F.2d 859, 862-63 (CCPA 1962).
For the reasons discussed below, independent claim 15, and claims
16-25 and 38-44 which depend from this claim, fail to particularly point out
and distinctly claim Appellants’ invention as required by the second
paragraph of 35 U.S.C. § 112. Therefore, the § 103 rejection of these claims
necessarily involves speculative assumptions as to the meaning of the
claims. Under these circumstances, we reverse the § 103 rejection of claims
15-25 and 38-44.
However, we emphasize that our reversal of this rejection as to claims
15-25 and 38-44 is because the claims are indefinite; hence, a decision has
not been made based on the technical merits of the obviousness rejection
respecting these claims.

III. New Ground of Rejection
We introduce a new ground of rejection of independent claim 15 and
the claims depending thereon (claims 16-25 and 38-44) under the second
paragraph of 35 U.S.C. § 112. We introduce new grounds of rejection of
claims 15-18 under the first paragraph of 35 U.S.C. § 112.
ADDITIONAL FINDINGS OF FACT
Appellants disclose that:
In another embodiment a method to achieve control of a
leading indicator in a gas phase polymerization reaction in a
polymerization reactor, is contemplated comprising: a)
calculating a leading indicator, (LI), such that the numerator
and denominator have the same dynamic response to process
changes; b) choosing at least one process sensitive variable to
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manipulate to control said leading indicator (LI); c)
manipulating the process sensitive variable; and d) removing a
polymer product.
Spec., para. 0014.
Regarding the disclosed invention, Appellants further provide that:
Because analysis of the recycle gas stream to determine
gas ratio or ratios (GR), takes a finite time (td or delay time)
and it also takes a finite time for the gas ratio or ratios (GR) to
change in response to a flow ratio (FR) change, a manipulation
(dynamic compensation) must be performed on the numerator
to keep the numerator and denominator in phase and the leading
indicator (LI) accurate. Whichever ratio is used in the
denominator will also be used in the numerator, that is, if
ethylene to comonomer is the ratio in the denominator, the
ethylene to comonomer ratio will also be the basis for the
numerator. Or, if ethylene to hydrogen is the ratio in the
denominator, the ethylene to hydrogen ratio will also be the
basis for the numerator.
Spec., para. 0026.
In paragraph 0026 of the Specification and ensuing paragraphs
thereof, Appellants go on to furnish a general equation (1a) that may be used
for calculating a leading indicator value and provide how that equation is
related to mathematical expressions (1) found in provisional applications
60/512,502 and 60/512,355. The aforementioned provisional applications
are incorporated by reference into the present Application (Spec. 0001).
In paragraph 0043 of the Specification, another embodiment is
described wherein a process sensitive parameter is chosen for manipulation
to control a leading indicator function and the process sensitive parameter is
manipulated using changes in process system parameter values to control a
leading indicator.
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In paragraph 0050, Appellants disclose that “functions of Equation
(1a) or variations thereof are also within the scope of embodiments of the
invention.”
Appellants present an Example 1 and comparative Examples 1 and 2,
wherein in Example 1 leading indicator (LI) values or numbers calculated
using formula 1(a) are provided (Spec. paras 0132-0142; Tables 1 and 2).
Appellants provide that:
As one will readily appreciate from the disclosure,
processes, machines, manufacture, compositions of matter,
means, methods, or steps, presently existing or later to be
developed that perform substantially the same function or
achieve substantially the same result as the corresponding
embodiments described herein may be utilized. Accordingly,
the appended claims are intended to include within their scope
such processes, machines, manufacture, compositions of matter,
means, methods, or steps.
Spec., para. 0166

PRINCIPLES OF LAW
Definiteness
A central purpose of the second paragraph of 35 U.S.C. § 112 “is to
provide those who would endeavor, in future enterprise, to approach the area
circumscribed by the claims of a patent, with the adequate notice demanded
by due process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate the possibility
of infringement and dominance.” In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970).
The test for definiteness under the second paragraph of 35 U.S.C.
§ 112 is "whether those skilled in the art would understand what is claimed
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when the claim is read in light of the specification." Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). The
language of a claim satisfies § 112, ¶ 2 only if “one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Exxon Research & Eng’ring Co. v. United States, 265 F.3d 1371, 1375 (Fed.
Cir. 2001).
“The USPTO is justified in using a lower threshold showing of
ambiguity to support a finding of indefiniteness under 35 U.S.C. § 112,
second paragraph, because the applicant has an opportunity and a duty to
amend the claims during prosecution to more clearly and precisely define the
metes and bounds of the claimed invention and to more clearly and precisely
put the public on notice of the scope of the patent.” Ex parte Miyazaki, 89
USPQ2d 1207, 1212 (BPAI 2008) (precedential).
Consequently and during prosecution "if a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite." Miyazaki, 89 USPQ2d at 1211.

Enablement
“To be enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk, A/S,
108 F.3d 1361, 1365 (Fed. Cir.1997) (quoting In re Wright, 999 F.2d 1557,
1561 (Fed. Cir. 1993) (emphasis added).
As stated in In re Wands, 858 F.2d 731 (Fed. Cir. 1988):
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Factors to be considered in determining whether a
disclosure would require undue experimentation . . . include (1)
the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.

Id. at 737.

All of the factors need not be reviewed when determining whether a
disclosure is enabling. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200,
1213 (Fed. Cir. 1991) (noting that the Wands factors “are illustrative, not
mandatory. What is relevant depends on the facts”).

Written Description
As set forth by our reviewing court, sitting en banc, in Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1349-51 (Fed.
Cir. 2010):
[T]he functional claim may simply claim a desired result
…. [T]he Specification must demonstrate that the applicant has
made a generic invention that achieves the claimed result and
do so by showing that the applicant has invented species
sufficient to support a claim to the functionally-defined genus.
. . .
[T]he hallmark of written description is disclosure. . . . [T]he
test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the
art. Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.

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Rejection Under § 112, second paragraph
Claims 15-25 and 38-44 fail to particularly point out and distinctly
claim the subject matter which Applicants regard as invention; hence, we
reject these claims as running afoul of the requirements of the second
paragraph of 35 U.S.C. § 112 (37 C.F.R. § 41.50(b)).
Independent claim 15 is internally inconsistent in providing for a step
of calculating a leading indicator (LI), while defining the leading indicator
as “comprising a numerator and denominator wherein the numerator and
denominator have different response times to process changes, such that the
measured values of the numerator and denominator are in phase relative to
their response times to process changes” (claim 15, step (a)).
Giving claim 15 its broadest reasonable construction when read in
light of the Specification as it would be understood by one of ordinary skill
in the art, a “calculated” leading indicator (LI), as called for on the one hand
by claim 15, is a number, which number could, of course, be expressed as a
fraction having a numerator and denominator (see, for example, Spec., Table
1). On the other hand, claim 15 calls for a leading indicator function or
mathematical expression that is used for the calculation by referring to the
leading indicator as having “a numerator and denominator wherein the
numerator and denominator have different response times to process
changes, such that the measured values of the numerator and denominator
are in phase relative to their response times to process changes” (see also
Spec. paras. 0014, 0026 et. seq.). However, while claim 1 is read in light of
the Specification, it would be inappropriate to import any particular formula
for calculating the leading indicator, such as equation 1(a) (Spec. paras.
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0026 and 0137) from the Specification into claim 15 in giving claim 15 a
broadest reasonable construction consistent with the Specification as it
would have been understood by an ordinarily skilled artisan. During
prosecution, an applicant seeking a narrower construction must either show
why the broader construction is unreasonable or amend the claim to
expressly state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed.
Cir. 1997).
Consequently and under these circumstances, claim 15 is indefinite in
calling for a calculating step for determining an LI and requiring subsequent
steps of “choosing” and “manipulating” associated with the LI, as set forth
therein. This is, in part, because the proper scope to be accorded the subject
matter called for by claim 15 is indeterminable here, where, the numerator
and denominator are functionally described in claim 15 and Appellants have
indicated in the Specification that the claim language is not intended to be
limited to the described embodiments of the Specification, but includes both
“presently existing or later to be developed” techniques for arriving at
substantially the same results or performing substantially the same function
(Spec. para. 0166). See Halliburton Energy Servs. v. M-I LLC, 514 F.3d
1244, 1255 (Fed. Cir. 2008) ("When a claim limitation is defined in purely
functional terms, the task of determining whether that limitation is
sufficiently definite is a difficult one that is highly dependent on context . . ."
and holding that a "fragile gel" was indefinite.)
Claims 16-18, which depend from claim 15 do not cure the above-
discussed infirmities. Concerning claims 19-25, and 38-44, we are
cognizant, of course, that claims 19 and 38 each furnish a specified version
of equation 1(a) for calculation of a leading indicator. However, each of
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claims 19 and 38 further call for steps (c) comparing the LI to a target value
and (d) adjusting a reaction parameter in response to a deviation between the
LI and the target value whereas claim 15 calls for (b) choosing a process
sensitive variable to control the leading indicator and (c) manipulating the
process sensitive variable. The added steps (c) and (d) of dependent claims
19 and 38 are not clearly related to and/or conflict with steps (b) and (c) of
claim 15. In this regard, the step of “choosing at least one process sensitive
variable to manipulate to control said leading indicator (LI)” and the
manipulating step of claim 15 have no clear relationship to the steps of
“comparing LI to a target value” and “adjusting at least one reaction
parameter in response to a deviation in LI and the target value” of claims 19
and 38. Moreover, the measured value (FR2) of the numerator and the
denominator (GR1) of the formula 1(a) of claims 19 and 38 are disclosed as
being out of phase in terms of response times in contrast to the requirements
of claim 15 (see Spec. 0026).2 Thus, claims 19 and 38 and claims 20-25 and
39-44, which depend thereon, respectively, are of indefinite claim scope and
do not particularly point out and distinctly claim that which Appellants’
regard as their invention.

Rejection Under § 112, first paragraph
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
15- 18 under the first paragraph of 35 U.S.C. § 112 for failing to be
supported by a written description in the Application, as filed, that shows

2 Manipulation or a dynamic adjustment or compensation bring these
measured values in phase according to the Specification (paras. 0014 and
0026).
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that the Applicants had possession of the invention as claimed and/or that
provides an enabling disclosure commensurate in scope with the breadth of
these claims.
As was noted above, claim 15 has been found indefinite. However,
even if we could construe claim 15 as reasonably definite, such a claimed
process is neither supported by an adequate written description to support
the generic claim 15 or a disclosure that is sufficient to enable a person
skilled in the art to make and use the same. For example, claim 15 could be
construed as a process requiring a gas phase polymerization method wherein
a leading indicator is calculated via any functional expression wherein a
numerator and a denominator have different response times to process
changes but nonetheless such that measured values of the numerator and
denominator are in phase relative to their response times to process changes
and wherein a process sensitive variable is chosen to manipulate to control
the leading indicator, and the variable is so manipulated, and a polymer
product removed.
Starting with the description prong first, we note that Appellants refer
to the Specification, in general, and particularly pages 7 through 9, more
particularly page 8, lines 22-29 (para. 0026), page 13, lines 25-29 (para.
0043), and page 4, line 30 through page 5, line 3 (para. 0014) in furnishing a
concise summary description of the subject matter to which claim 15 relates
pursuant to 37 C.F.R. § 41. 37(c)(v) (App. Br. 3).
It is evident that there is a lack of a sufficient description in the
Specification, as filed, of a reasonable number of species to support the
notion that Appellants were in possession of a generic functional formula for
calculating leading indicators for producing polymers of any type with
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numerators and denominators satisfying the broadly coined functional
requirements of independent claim 15. The inventive Examples 1, 3 and 5
are drawn to polymerization of ethylene with 1-hexene and hydrogen,
employ a particularly specified catalyst system, particular reaction
conditions in a fluidized bed, and a particular leading indicator function with
simulated leading indicator targets and wherein water addition, comonomer
and/or hydrogen flow were employed to stimulate reaction condition
changes (Spec. paras 0132-0161; Tables 1-3; Examples 1, 3 and 5). These
Examples are clearly not representative of the breadth of the subject matter
within the scope of claim 15.
This is particularly so given the plethora of monomers, process
sensitive variables, catalysts, and leading indicator functions that Appellants
cover with claim 15 as evinced by the non-limiting lists provided in
paragraphs 0014, 0042, 0043, 0051, 0078-00131, and 0166 of the
Specification. At most, Appellants appear to have “contemplated” subject
matter commensurate in scope with claim 15, not demonstrated possession
thereof (para. 0014). In this regard, Appellants appear to be attempting to
pre-empt the future (Spec. para. 0166).
Dependent claim 16-18 are each narrower than claim 15 in only one
aspect and, consequently, lack descriptive support for substantially similar
reasons as set forth for claim 15.
Concerning the enablement prong of the introduced rejection under
the first paragraph of 35 U.S.C. § 112, we need not separately review all of
the Wands factors to arrive at the determination that undue experimentation
would be involved in arriving at subject matter reasonably commensurate in
scope with claims 15-18. It is reasonable to expect a significant degree of
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unpredictability where chemical reactions, particularly where complex
catalyst systems and generically embraced polymerization reactions are
involved, as here. Given the extensive claim breadth, as discussed above,
and the lack of detailed Examples in the Specification demonstrating the
successful use of a leading indicator for polymer process control across a
representative spectrum of the process variants encompassed by these
claims, such as Examples from a representative cross-section of (1) the types
of polymerization encompassed within the breadth of claims 15-18, (2) the
kinds of unrestricted process sensitive variable manipulations encompassed
by claims 15-18, (3) the plethora of potential catalyst combinations that may
be employed (see Spec. paras. 0082-0131 and 0166), and (4) the number and
type of leading indicator functions that could be contemplated; it cannot be
gainsaid that these factors (corresponding to Wands factors 1-4, 7, and 8)
carry considerable weight in establishing that undue experimentation would
be required to complete a disclosure that reasonably supports the full scope
of claims 15-18.
Moreover, the functional nature of the generic expression employed in
claim 15 as a leading indicator function for calculating a leading indicator
coupled with the expressly acknowledged intent of encompassing later to be
developed technology by functionally or results limited claims, such as
claims 15-18, further evinces a lack of a complete disclosure (Spec. para.
0166).
The above-noted factors far outweigh any contrary position that could
be posited by assuming a high level of skill in this art that would arguably
serve to militate against the considerable experimental work required.
Giving Appellants the benefit of any doubt, Wands’ Factor 5 would, at best,
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be neutral. This is because the Li function and, consequently, the associated
calculation and process sensitive variable manipulation based thereon
represent the argued point of departure from the prior art (App. Br. 11).
In light of the above, we determine that the weight of the evidence
establishes that it is more likely than not that the originally filed disclosure is
inadequate to support the full scope of claims 15-18 without undue
experimentation.
Accordingly, we introduce a rejection of claims 15-18 under the first
paragraph of 35 U.S.C. § 112 as lacking adequate written descriptive support
to establish that Applicants were in possession of the invention, as claimed,
and as lacking an adequate disclosure sufficient to enable a skilled artisan to
make and use the same in a manner commensurate in scope with claims 15-
18 without undue experimentation.

DECISION/ORDER
The decision of the Examiner to reject claims 1- 45 under 35 U.S.C. §
103(a) as being unpatentable over Lue is reversed. We enter a new ground
of rejection pursuant to our authority under 37 C.F.R. § 41.50(b) of claims
15-25 and 38-44 under 35 U.S.C. § 112, second paragraph, and of claims 15-
18 under 35 U.S.C. § 112, first paragraph under both the enablement and
written description requirements thereof.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provide that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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)(2007).

REVERSED; § 41.50(b)

PL Initial:
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