Ex Parte Tamura et al

Board of Patent Appeals and Interferences

Jul 29, 2002

08521432 (B.P.A.I. Jul. 29, 2002)

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not written for publication and is not binding precedent of the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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MITSUHISA TAMURA, KENSHI UCHIDA,
KIYOSHI IWANAGA AND YOSHIAKI ITO
__________
Appeal No. 2000-0998
Application 08/521,432
___________
HEARD: July 11, 2002
___________
Before OWENS, LIEBERMAN and PAWLIKOWSKI, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the refusal to allow claims 1-8 as
amended after final rejection. These are all of the claims in
the application.
THE INVENTION
The appellants claim a process for producing 1-hexene
comprising preparing a specified catalyst system in 1-hexene
solvent, charging the catalyst system in a reaction vessel
without removing the 1-hexene solvent from the catalyst system,
adding ethylene and a solvent consisting essentially of 1-hexene
Appeal No. 2000-0998
Application 08/521,432
2
to the reaction vessel, and trimerizing the ethylene to form
1-hexene. Claim 1 is illustrative:
1. A process for producing 1-hexene comprising the steps
of:
(1) preparing a catalyst system by contacting in a 1-hexene
solvent the following components (A), (B), (C) and (D):
(A) a chromium-containing compound represented by the
general formula:
CrXkYm
wherein X is a residue of a carboxylic acid, a residue
of a 1,3-diketone, a halogen atom or an alkoxyl group,
k is an integer of 2 to 4, Y in Ym is an amine
compound, a phosphine compound, a phosphine oxide
compound, a nitrosyl group or an ether compound and m
is an integer of 0 to 6, with the proviso that any two
Y’s may be same or different;
(B) trialkylaluminum or dialkylaluminum hydride;
(C) a pyrrole compound or a derivative thereof;
(D) a Group 13 (IIIB)-halogen compound represented by the
general formula: MTtU3-t or a Group 14 (IVB)-halogen
compound represented by the general formula:
M’Tt’U4-t’ wherein M is a Group 13 (IIIB) atom, M’ is
a Group 14(IVB) atom, T is an alkyl group, an aryl
group, an allyl group or a hydrogen atom, U is a
halogen atom, t is a real number of 0 or more and less
than 3 and t’ is a real number of 0 or more and less
than 4;

(2) charging the catalyst system in a reaction vessel
without removing the 1-hexene solvent from the catalyst system;
(3) adding ethylene and a solvent to the reaction vessel;
and
Appeal No. 2000-0998
Application 08/521,432
1 In tests in which the catalyst is prepared in 1-hexene (runs 7010-7013), 1-hexene is
separated from the catalyst and the solvent added to the trimerization reactor is cyclohexane.
3
(4) trimerizing said ethylene to form 1-hexene;
wherein said solvent added to the reaction vessel consists
essentially of 1-hexene and wherein said solvent added to the
reaction vessel is not removed from the 1-hexene formed by
trimerization.
THE REFERENCE
Reagen et al. (Reagen) 5,523,507 Jun. 4, 1996
(effective filing date on or before Dec. 13, 1991)
THE REJECTION
Claims 1-8 stand rejected under 35 U.S.C. § 103 as obvious
over Reagen.
OPINION
We reverse the aforementioned rejection. We need to address
only claim 1, which is the sole independent claim.
There is no dispute as to whether Reagen discloses a
catalyst made by contacting components (A) to (D) in the
appellants’ claim 1. The dispute pertains to the 1-hexene
solvent.
Reagen discloses that stable and active catalyst systems can
be formed in the presence of an unsaturated hydrocarbon (col. 12,
lines 65-66). The disclosed unsaturated hydrocarbons include
1-hexene (col. 13, lines 22-23).1 Reagen teaches that the
Appeal No. 2000-0998
Application 08/521,432
4
unsaturated hydrocarbon, which can be one or more of the olefin
reactants trimerized, oligomerized and/or polymerized in the
presence of the catalyst, preferably is present during the
catalyst system preparation, but can be introduced directly into
the trimerization, oligomerization and/or polymerization reactor
(col. 9, lines 36-48; col. 12, line 66 - col. 13, line 6).
Reagen discloses that ethylene can be trimerized to 1-hexene and
that ethylene and hexene can be co-trimerized to 1-decene and/or
1-tetradecene (col. 17, line 66 - col. 17, line 4).
The examiner argues that Reagen discloses (col. 17,
lines 17-32) that mixtures of ethylene and 1-hexene can be used
as trimerizable olefin compounds, and argues that the 1-hexene
can be considered to be both a reactant and a solvent (answer,
page 3). The examiner argues that one of ordinary skill in the
art who used 1-hexene as the solvent in the catalyst preparation
would have charged to the trimerization reaction vessel that
1-hexene still mixed with the catalyst system rather than
incurring the added expense of separating the 1-hexene from the
catalyst system and then recombining 1-hexene with the catalyst
system in the trimerization reaction vessel (answer, page 4).
The appellants’ claim 1 requires that ethylene is trimerized
to form 1-hexene. The examiner relies upon Reagen’s teaching
Appeal No. 2000-0998
Application 08/521,432
5
that ethylene and hexene can be co-trimerized, but does not point
out where Reagen teaches that this co-trimerization produces some
1-hexene. Also, the examiner provides no technical explanation
as to why this co-trimerization necessarily produces some
1-hexene. Hence, the examiner has not established that, even if
Reagen’s 1-hexene used in preparing the catalyst system were not
separated from the catalyst system but, instead, were used in the
co-trimerization of ethylene an 1-hexene as proposed by the
examiner, the process would be that claimed by the appellants.
See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052,
5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The examiner, therefore, has not carried the burden of
establishing a prima facie case of obviousness of the appellants’
claimed process. Accordingly, we reverse the examiner’s
rejection.
Appeal No. 2000-0998
Application 08/521,432
6
DECISION
The rejection of claims 1-8 under 35 U.S.C. § 103 over
Reagen is reversed.
REVERSED
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PAUL LIEBERMAN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
Appeal No. 2000-0998
Application 08/521,432
7
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