Ex Parte Winslow

Board of Patent Appeals and Interferences

Jul 29, 2005

10087028 (B.P.A.I. Jul. 29, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LINDA N. WINSLOW
_____________
Appeal No. 2005-2257
Application No. 10/087,028
______________
ON BRIEF
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Before KIMLIN, GARRIS, and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 12-20.
The subject matter on appeal relates to a process for
coupling two or more olefins which involves using a catalyst
conforming to a particular formula. This appealed subject matter
is adequately represented by claim 12, the sole independent claim
on appeal, which reads as follows:
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Application No. 10/087,028
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12. A process for coupling two or more olefins, the
process comprising:
1) introducing into a reaction vessel an activator and a
catalyst of formula I:

where
M is a metal selected from Groups 3 to 10 of the
Periodic Table;
R1 and R2 are the same or different and are
independently selected from hydrogen, C1-10alkyl,
C6-10aryl, or C7-15aralkyl, each of these optionally
substituted with halogen, cyano, C1-4alkoxy, C1-4alkyl,
and with the proviso that not more than 1 of R1 or R2
is a hydrocarbon which is branched at the imino-bonded
carbon atom;
R3, R4, R5, and R6 are independently hydrogen,
C1-10alkyl, C6-10aryl, C7-15aralkyl, C1-10alkoxy, or
C1-10dialkylamino, each of these optionally substituted
with halogen, cyano, C1-4alkoxy, or C1-4alkyl, or
wherein any two adjacent R3 through R6 form a cyclic
structure or are part of a larger ring structure, said
cyclic structure and said larger ring structure
optionally containing one or more heteroatoms,
preferably B, N, O, S, or P;
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Application No. 10/087,028
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L is a neutral or charged ligand; and
p is a integer such that complex I is neutral and the
valency of M is satisfied; and

2) introducing at least one olefin into the reaction
vessel, wherein at least two molecules of olefin are
coupled together.
The reference set forth below is relied upon by the examiner
in the Section 102 rejection before us:
Hauptman et al. (Hauptman) WO 01/923242 A2 Dec. 6, 2001
(published World Intell. Prop. Org. Patent Application)
All of the appealed claims stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by Hauptman.
OPINION
Hauptman discloses compounds useful as olefin polymerization
catalysts including, for example, the ligands represented by
formulae XIV and XV shown on page 30. The undisputed issue in
this appeal is whether the R26 and R27 substituents of these
ligands comply with the appealed independent claim 12 definition
for catalyst substituents R1 and R2 and in particular the proviso
that “not more than 1 of R1 or R2 is a hydrocarbon which is
branched at the imino-bonded carbon atom.”
Concerning this issue, the appellant and the examiner both
agree that Hauptman defines his R26 and R27 substituents as being
“each independently hydrocarbyl or substituted hydrocarbyl,
Appeal No. 2005-2257
Application No. 10/087,028
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provided that the carbon atom bonded to the imino nitrogen atom
has at least two carbon atoms bound to it” (lines 4-7 on page
31). It is the appellant’s position that the aforequoted proviso
results in both R26 and R27 being a branched hydrocarbon at the
imino-bonded carbon atom whereas appealed claim 12 permits only 1
such substituent to be so branched. On the other hand, the
examiner argues that Hauptman’s proviso “does not necessarily
mean that the secondary carbon atom is branched” (answer, page
4). In this regard, the examiner explains that “a phenyl group
(as shown in Hauptman, page 88, formula 48) or a cyclohexyl group
with six identical secondary carbon atoms is not branched because
the bond connectivity of the carbon atoms are all linked in a
cyclic fashion destroying any branching” (answer, pages 4-5).
Thus, the pivotal determination in resolving this appeal is
whether the cyclic structure of the R26 and R27 phenyl substituents
taught by Hauptman (e.g., see item 48 on page 88) are properly
considered a branched structure or not. If the phenyl
substituents are considered branched structures as urged by
appellant, Hauptman’s compounds are excluded by the claim
12 proviso. If not as urged by the examiner, Hauptman’s
compounds fall within the scope of the appealed claims, thus
making the examiner’s finding of anticipation correct.
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Application No. 10/087,028
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On the record before us, the examiner has proffered no
evidence whatsoever to support his position that Hauptman’s
phenyl substituents should not be considered branched at the
imino-bonded carbon atom. In contrast, the appellant not only
has challenged the propriety of the examiner’s position but has
submitted evidence to refute it. This evidence is in the form of
a declaration under 37 CFR § 1.132, filed September 20, 2004, by
Dr. James W. Proscia. In this declaration, Dr. Proscia explains
why an aryl group directly bonded to an imino nitrogen “is
clearly branched” and “is clearly understood by one of ordinary
skill in the art of organic chemistry as ‘branched at the imino
carbon’” (declaration, page 2).
Under these circumstances, we are compelled to agree with
the appellant that Hauptman’s above discussed compounds are
excluded from the appealed claims. No other determination is
possible where, as here, the only evidence presented to us
concerning this matter supports the appellant’s position. We
hereby reverse, therefore, the examiner’s Section 102 rejection
of claims 12-20 as being anticipated by Hauptman.
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Application No. 10/087,028
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The decision of the examiner is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CATHERINE TIMM )
Administrative Patent Judge )
BRG/hh
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BROOKS KUSHMAN, P.C.
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