Ex parte Staniek

Board of Patent Appeals and Interferences

Jul 20, 2001

08534961 (B.P.A.I. Jul. 20, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER STANIEK

___________
Appeal No. 1998-2636
Application No. 08/534,961
__________
ON BRIEF
_________
Before GARRIS, LIEBERMAN, and TIMM, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1, 3, 6 and 8-11 as amended
subsequent to the final rejection. Claims 13 and 14 have been
withdrawn from further consideration by the examiner, and
claims 15-18 have been allowed. These are all of the claims
remaining in the application.
Appeal No. 1998-2636
Application No. 08/534,961
2
The subject matter on appeal relates to a polyolefinic
composition comprising a phosphorous-containing compound of a
particular formula which is disclosed as stabilizing
polyolefins against degradation and a polyolefin which has
been produced in the presence of a Generation II, III, IV, or
V catalyst which has not been removed. This appealed subject
matter is adequately illustrated by independent claim 1, the
sole independent
claim on appeal,
which reads as
follows :
1. A polyolefinic
composi tion
comprising
a) a compound of formula II
in which
Appeal No. 1998-2636
Application No. 08/534,961
3
each R independently is selected from linear or1
branched C alkyl, C cycloalkyl, 1-30 5-12
C alkenyl, C alkoxyalkyl, 2-24 2-18
C alkanoylmethylene, C alkaryl, 2-19 7-30
C aralkyl, C heteroaryl (where any one of7-30 4-24
the above substituents of R are1
unsubstituted or are substituted by 1 to 3
groups selected from C alkyl, -OR , -NR R ,1-12 4 4 5
-COR and -COOR ); and C aryl,4 4 6-30
unsubstituted or substituted by 1 to 5
groups R selected from C alkyl, C alkoxy,3 1-12 1-8
C cycloalkyl, phenyl or phenoxy, -OR , -5-6 4
NR R , -COR and 4 5 4
-COOR , 4
R and R independently are selected from hydrogen, 4 5
C alkyl (linear or branched),1-30
C cycloalkyl, C aryl, C alkaryl or 5-12 6-24 7-30
C aralkyl;7-30
A is a direct bond, a group -(P-R ) - or an 1 p
n-valent aliphatic or aromatic residue,
(preferably C alkylene (linear or1-30
branched), C cycloalkylene, 5-12
C alkarylene, C aralkylene, C arylene, a7-30 7-30 6-24
N-, O-, S-, or P- containing
C heteroarylene, C alkylidene or 6-24 2-30
C alkylene interrupted by N, O or S);2-30
n is 2 to 5; and
p is 1 to 12;
the compounds of formula II hereinafter being called
component a; and
b) a polyolefin which has been produced in the
presence of a Generation II, III, IV, or V catalyst
which has not been removed (hereinafter called
component b).
Appeal No. 1998-2636
Application No. 08/534,961
As indicated on page 2 of the brief, the appealed claims1
have been grouped together. Accordingly, in resolving the
issues before us on this appeal, we need focus only on
independent claim 1.
4
The references relied upon by the examiner as evidence of
obviousness are:
Mathis et al. (Mathis) 3,637,907 Jan. 25, 1972
Kaminsky et al. (Kaminsky) 4,542,199 Sep. 17, 1985
Turner 4,752,597 Jun. 21, 1988
Ewen et al. (Ewen) 4,937,299 Jun. 26, 1990
The reference of record set forth below is relied upon by
the appellant in support of his nonobviousness position and is
discussed in the brief and in the Staniek declaration of
record as well as in the answer:
Mulhaupt, “International Conference on Advances in
Stabilization and Controlled Degradation of Polymers,” pp.
181-196 (1990).
All of the claims are rejected under 35 U.S.C. § 103 as
being unpatentable over Mathis taken with Kaminsky, Turner and
Ewen.1
We refer to the brief and reply brief and to the answer
for an exposition of the opposing viewpoints expressed by the
appellant and by the examiner concerning the above noted
rejection.
OPINION
Appeal No. 1998-2636
Application No. 08/534,961
5
We will sustain the examiner’s section 103 rejection for
the reasons set forth below.
Mathis discloses a polyolefinic composition which
comprises a polyolefin-stabilizing, phosphorous-containing
compound of the type here defined as component a) in
combination with a polyolefin albeit not the appellant’s
specifically claimed polyolefin defined as component b) of
appealed independent claim 1. That is, the polyolefin of
Mathis is not descrbied as having been produced in the
presence of a Generation II, III, IV, or V catalyst which has
not been removed. However, this last mentioned type of
polyolefin is disclosed by Turner who expressly teaches that
the catalyst is not removed from the polymer and that
antioxidants and other additives as are known in the art may
be added to the polymer (e.g., see the paragraph bridging
columns 7 and 8).
In light of these teachings, it would have been obvious
for one with ordinary skill in the art to use the polyolefin-
stabilizing compound of Mathis in combination with the
catalyst-containing polyolefin of Turner particularly since
the latter expressly teaches adding to this polymer
antioxidants and other additives which are known in the art
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Application No. 08/534,961
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and thus which seemingly would encompass the polyolefin-
stabilizing additives of Mathis. This combination would have
been motivated by the desire to render Turner’s polyolefins
more stable via the phosphorous-containing compounds taught by
Mathis to be well known for this purpose. Moreover, the above
discussed teachings would have provided the artisan with a
reasonable expectation that the combination in question would
successfully achieve the desired stability enhancement. In re
O’Farrell, 853 F.2d 894, 903-904,
7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).
In support of his nonobviousness position, the appellant
refers to the Mulhaupt reference and to the 37 CFR § 1.132
declaration of record by Staniek. In essence, it is the
appellant’s position that no basis exists for extrapolating
the polyolefin-stabilizer teachings of Mathis to polyolefins
of the type here claimed which are prepared by a Generation
II, III, IV, or V catalyst which has not been removed. The
appellant’s position is not well taken in a number of
respects.
We are mindful of the appellant’s point that the Mulhaupt
reference teaches that there are many potential interactions
between stabilizers and catalyst components of the type under
Appeal No. 1998-2636
Application No. 08/534,961
7
consideration which, in the absence of catalyst deactivation
or catalyst residue removal, may positively or negatively
affect the results of adding a stabilizer to a polymer
containing such catalyst components (e.g., see the second
paragraph on page 195). Contrary to the appellant’s apparent
belief, however, this teaching supports a conclusion of
obviousness rather than nonobviousness. This is because the
aforementioned teaching suggests that potential interactions
between stabilizers and catalyst components would not be a
concern under conditions wherein the catalysts have been
deactivated. It is here appropriate to emphasize that Turner
explicitly teaches deactivating the catalyst in his polyolefin
(e.g., see line 63 in column 7 through line 1 in column 8).
In this regard, it is also important to emphasize that the
independent claim on appeal encompasses polyolefin which
contains catalyst in either an active or inactive state as
evinced by lines 1-17, especially lines 12-17 on page 14 of
the subject specification. In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983) (claims are to be given
their broadest reasonable interpretation consistent with the
specification and should be read in light of the
specification).
Appeal No. 1998-2636
Application No. 08/534,961
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In light of the foregoing, we are convinced that an
artisan would have combined the polyolefin-stabilizer of
Mathis with the deactivated catalyst containing polyolefin of
Turner based upon a reasonable expectation of success. In re
O’Farrell, id.
A contrary conclusion is not supported by the Staniek
declaration for a number of reasons. In the first place, the
declaration does not address the active versus inactive
catalyst issue discussed above and indeed appears to be
limited to a polypropylene which contains active third
generation catalyst. It follows that appealed independent
claim 1, which encompasses active as well as inactive
catalysts, is much broader in scope than the Staniek
declaration.
Analogously, this claim encompasses all forms of
polyolefin and all forms of Generation II, III, IV, and V
catalyst and therfore is much broader in scope than the
declaration which is limited only to polypropylene as a
polyolefin and to a specific third generation catalyst.
Additionally, the independent claim on appeal encompasses a
wide variety of compounds in the claimed definition of
component a) whereas the declaration tests only two compounds
Appeal No. 1998-2636
Application No. 08/534,961
With further regard to this point, we note that the2
inventive and comparison results exhibited by declaration
compound 6 (e.g., see Table 3) do not appear to be
significantly or statistically different. Viewed from this
perspective, it is questionable whether the compound 6 results
(even when considered in a light most generous to the
appellant) could be properly characterized as unexpected. The
appellant and the examiner should address this issue in any
further prosecution that may occur.
9
which fall within this definition, namely, declaration
compounds 5 and 6.2
For the above stated reasons, it is clear that the
declaration evidence proferred by the appellant is
considerably more narrow in scope than the argued claim on
appeal. We remind the appellant that evidence presented to
rebut a prima facie case of obviousness must be commensurate
in scope with the claims to which it pertains and that such
evidence which is considerably more narrow in scope than the
claimed subject matter is not sufficient to rebut the prima
facie case. In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805,
808 (CCPA 1979). Under these circumstances, it our
determination that the evidence before us on this appeal, on
balance, weighs most heavily in favor of an obviousness
conclusion. We shall sustain, therefore, the examiner’s
Appeal No. 1998-2636
Application No. 08/534,961
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section 103 rejection of claims 1, 3, 6 and 8-11 as being
unpatentable over Mathis taken with Kaminsky, Turner and Ewen.
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 CFR
§ 1.136(a).
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Paul Lieberman ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Catherine Timm )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1998-2636
Application No. 08/534,961
11
Clariant Corporation
Industrial Property Department
4331 Chesapeake Drive
Charlotte, NC 28216