Ex Parte Thorman et al

Patent Trial and Appeal Board

Sep 29, 2014

12419766 (P.T.A.B. Sep. 29, 2014)

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.
12/419,766 04/07/2009 Joseph L. Thorman COS-1166 1224
25264 7590 09/29/2014
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
ENG, ELIZABETH
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
09/29/2014 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 JOSEPH L. THORMAN and
STEVEN BORGFELD
____________

Appeal 2013-000623
Application 12/419,766
Technology Center 1700
____________

Before CHUNG K. PAK, JAMES C. HOUSEL, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1 through 12 and 14 through 19, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The subject matter on appeal is directed to “polymerization processes and
polymers formed therefrom.” (Spec. 2, ¶ [0005].) The polymerization processes
generally involve contacting an olefin monomer with a single-site transition metal

1 The Real Party in Interest is said to be Fina Technology, Inc. (See Appeal Brief
filed June 19, 2012(“App. Br.”) at 6.)
2 Final Office Action mailed November 29, 2011.
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Application 12/419,766

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catalyst in the presence of a multi-functional block copolymer non-ionic surfactant
within a reaction vessel under polymerization conditions. (Spec. 2, ¶ [0005].) The
single-site transition metal catalyst can be selected from non-limiting examples of
a myriad of metallocene catalysts listed at pages 4 through 16 of the Specification
(Spec. 2 and 4–16, ¶¶ [0006] and [0015]–[0050].) The multi-functional block
copolymer non-ionic surfactant can be selected from a myriad of multi-functional
block copolymers listed at pages 19 through 21 of the Specification. (Spec. 19–21,
¶¶ [0060]–[0070].) These polymerization processes are said to minimize fouling
“while maintaining catalyst activity or at least minimizing the reduction of catalyst
activity.” (Spec. 4, ¶ [0014].)
Details of the appealed subject matter are recited in representative claim 13
reproduced below from the Claims Appendix to the Appeal Brief:
1. A polymerization process comprising:

introducing an olefin monomer into a reaction vessel;

introducing a catalyst system comprising a single-site transition
metal catalyst into the reaction vessel;

introducing a non-ionic surfactant into the reaction vessel,
wherein the non-ionic surfactant comprises a multi-functional block
copolymer and wherein the non-ionic surfactant is introduced in an
amount of from about 0.01 ppm to about 5 ppm with respect to the
weight of the monomer;

contacting the olefin monomer with the catalyst system in the

3 Appellants’ traversal of the rejections under 35 U.S.C. § 103(a) is based on
limitations common to independent claim 1. (See generally App. Br. 14–22.)
Appellants do not argue the claims on appeal separately. (Id.) Therefore, for
purposes of this appeal, we select independent claim 1 as representative and
confine our discussion to such claim. The remaining claims on appeal stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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presence of the non-ionic surfactant within the reaction vessel under
polymerization conditions to form a polyolefin; and

withdrawing the polyolefin from the reaction vessel.

(App. Br. 23, Claims App’x (emphasis added).)
Appellants seek review of following grounds of rejection maintained by the
Examiner in the Examiner’s Answer mailed July 25, 2012 (“Ans.”):
1. Claims 1–3, 5, 6, 8, 9, 11, 12, and 17 under 35 U.S.C. §103(a) as
unpatentable over Takahashi (JP 2000-313716 A, published November 14, 2000);
and
2. Claims 1–4, 6–12, and 14–19 under 35 U.S.C. §103(a) as
unpatentable over Sugimura (JP 2000-327707 A, published November 28, 2000).
(App. Br. 13.)
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence supports the
Examiner’s determination that one of ordinary skill in the art, armed with the
knowledge reflected in Takahashi or Sugimura, would have been led to the subject
matter recited in the claims on appeal within the meaning of 35 U.S.C. § 103(a).
On this record, we find Appellants’ arguments unpersuasive of reversible error in
the Examiner’s conclusion of obviousness for the reasons expressed in the Answer.
We add the following primarily for emphasis and completeness.
As is apparent from the record, Appellants do not dispute the Examiner’s
finding that Takahashi or Sugimura discloses a polymerization process comprising
introducing olefin monomer, a catalyst system comprising a single-site transition
metal catalyst, a non-ionic surfactant comprising a multi-functional block
copolymer into a reaction vessel, contacting the olefin monomer with the catalyst
system in the presence of the non-ionic surfactant in the reaction vessel, and
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withdrawing the polyolefin from the reaction vessel. (Compare Ans. 2 and 6 with
App. Br. 14–22.) Nor do Appellants dispute the Examiner’s finding that
Takahashi and Sugimura disclose employing 0.1 ppm to 400 ppm and 1.05 ppm to
1047 ppm of the non-ionic surfactant, respectively, in their polymerization
processes. (Compare Ans. 4 and 8–7 with App. Br. 14–22.) Thus, notwithstanding
Appellants’ arguments to the contrary,4 a preponderance of evidence supports the
Examiner’s finding that Takahashi or Sugimura expressly teaches using the non-
ionic surfactant in an amount inclusive of 0. 1ppm to 5.0 ppm or 1.05 ppm to 5.0
ppm, respectively, which are within the amounts of the non-ionic surfactant used in
the claimed polymerization process. As stated by our reviewing court in In re
Peterson, 315 F.3d 1325, 1329–330 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness…

See also Ormco Corp. v. Align Technology Inc., 463 F. 3d 1299, 1311 (Fed. Cir.
2006); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997).
This presumption of obviousness is rebuttable either by a showing that the
prior art taught away from the invention or by a showing of new and unexpected
results relative to the closest prior art. Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1322 (Fed. Cir. 2004); accord Lazare Kaplan Int’l, Inc. v.
Photoscribe Techs., Inc., 628 F.3d 1359, 1380–381 (Fed. Cir. 2010); see also In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“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

4 It is well-settled that prior art disclosures are not limited to the examples. In re
Inland Steel Co., 265 F.2d 1354, 1361 (Fed. Cir. 2001)
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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.”)
Relying on the above principles of law, Appellants contend that Takahashi
teaches away from less than 0.1 ppm. (App. Br. 15.) In support of this contention,
Appellants refer to relevant part of paragraph [0016] of Takahashi, which states
that:
If the supply rate of a polyalkylene oxide block exceeds a
mentioned range [i.e., 0.1-400 ppm], it is economically
disadvantageous, or polymerization activity may fall, and if it
becomes less than a mentioned range [0.1-400 ppm], the fluid
improvement effect of a polymerization granular material may not be
revealed.

However, the claims on appeal are not limited to employing the polyalkylene oxide
block non-ionic surfactant in an amount of less than 0.1 ppm. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[A]ppellant's arguments fail from the outset
because. . . they are not based on limitations appearing in the claims.”) The
claims, as written, include using the polyalkylene oxide block non-ionic surfactant
in any amount within about 0.01 ppm to about 5 ppm, inclusive of 0. 1ppm to 5.0
ppm or 1.05 ppm to 5.0 ppm taught or suggested by Takhashi or Sugimura to be
useful for a polymerization process involving olefin monomer and single-site
transition metal catalysts under the polymerization conditions recited in claim 1 as
discussed supra.
Appellants also argue that the amount of the non-ionic surfactant recited in
the claims on appeal imparts results not expected or recognized by Takahashi or
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Sugimura.5 (App. Br. 16-22.) In support of this argument, Appellants refer to
paragraphs 0072 and 0073 of the Specification which state that:
Unexpectedly, it has been observed that utilizing the
surfactants described herein with olefin polymerization processes,
and particularly with polymerization processes utilizing a
metallocene catalyst, result in improved anti-fouling properties
without substantially compromising catalyst system activity….

Unexpectedly, the embodiments of the invention result in
polymerization processes wherein the activity is able to be
maintained within at least about 100% (compared to an identical
process absent the surfactant), or at least about 90%, or at least about
70%, or at least about 60% or at least about 50%, for example.

(App. Br. 16–17 and 20). Appellants also refer to Tables 1 and 2 at pages 24 and
25 of the Specification to show that the claimed subject matter imparts unexpected
results. (App. Br. 18, 19, and 22.)
It is incumbent upon Appellants to show that the claimed subject matter
imparts unexpected results relative to the closest prior art, namely Takahashi or
Sugimura . In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of
showing unexpected results rests on he who asserts them”); In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.”) The mere assertion of unexpected results is not
sufficient. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument
cannot take the place of evidence); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.

5 See, e.g., In re Peterson, 315 F.3d at 1330–331(“In general, an applicant may
overcome a prima facie case of obviousness by establishing ‘that the [claimed]
range is critical, generally by showing the claimed range achieves unexpected
results relative to the prior art range.’”)

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1984) (mere arguments in the Brief or conclusory statements in the Specification
regarding unexpected results cannot take the place of objective evidence).
Here, Tables 1 and 2 at pages 24 and 25 of the Specification relied upon by
Appellants show that the fouling potential decreases as the concentration of a
surfactant designated as “A,” “B,” “C,” or “D” increases from 1 ppm to 5 ppm in
the presence of catalyst A.6 However, the showing in Tables 1 and 2 does not
demonstrate that the polymerization process employing about 0.01 ppm to about 5
ppm of such surfactants recited in claim 1 is unexpectedly superior to the
polymerization process employing more than 5 ppm of the surfactant taught by
Takahashi or Sugimura, the closest prior art. (App. Br. 18–22.) Based on the
trends shown in Tables 1 and 2, the polymerization process employing higher than
5 ppm (e.g., 50 ppm) of the surfactant exemplified by Takahashi or Sugimura is
reasonably expected to be much more superior than the claimed polymerization

6While the showing in Tables 1 and 2 is limited to using one catalyst with four
different non-ionic surfactants, the claims on appeal are not so limited. As is
apparent from the written description in the Specification discussed supra, the
claimed catalyst and non-ionic surfactant can be selected from a huge number of
catalysts and surfactants. Nevertheless, Appellants do not address why such a
limited showing is reasonably commensurate in scope with the degree of protection
sought by the claims on appeal. In re Lindner, 457 F.2d 506, 508 (CCPA 1972)
(“The claims, however, are much broader in scope, covering mixtures of numerous
compounds, and we have to agree with the Patent Office that there is no ‘adequate
basis for reasonably concluding that the great number and variety of compositions
included by the claims would behave in the same manner as the [single] tested
composition.’”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected results is
inadequate proof, for ‘it is the view of this court that objective evidence of non-
obviousness must be commensurate in scope with the claims which the evidence is
offered to support.’” ) In the event of further prosecution of the claimed subject
matter, both the Examiner and Appellants are advised to determine whether the
showing in Tables 1 and 2 is reasonably commensurate in scope with the claims if
such showing is again relied upon by Appellants to show unexpected results.
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process in terms of the fouling potential decrease, while maintaining catalyst
activity or at least minimizing the reduction of catalyst activity as discussed at
paragraph [0073] of the Specification. (See also Takahashi, ¶¶ [0016], [0029], and
[0030] which state that “polymerization activity may fall” if “polyalkylenoxide
block exceeds” 400 ppm and explains the addition of a small quantity of the
polyalkylene oxide block surfactant because “[i]t becomes possible to judge the
influence of the polymerization states on the catalytic activity fall by addition of
polyalkylene oxide block, . . . It becomes possible for there to be almost no
influence of the fall of catalytic activity . . .”.) On this record, Appellants have not
carried the burden of showing that the claimed invention imparts unexpected
results relative to the closest prior art as explained by the Examiner.
Accordingly, based on the totality of record, including due consideration of
Appellants’ arguments and evidence, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness of the subject matter recited
in the claims on appeal within the meaning of 35 U.S.C. § 103(a).
It follows that the decision of the Examiner rejecting the claims on appeal
under 35 U.S.C. § 103(a) 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).

AFFIRMED

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