Ex Parte Winter et al

Board of Patent Appeals and Interferences

May 25, 2005

08120105 (B.P.A.I. May. 25, 2005)

-1-
The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ANDREAS WINTER, WALTER SPALECK
and BERND BACHMANN

Appeal No. 2005-1211
Application No. 08/120,105

ON BRIEF

Before KIMLIN, OWENS and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 15,
17-19, 21-25 and 27-32. A copy of illustrative claim 17 is
appended to this decision.
In the rejection of the appealed claims, the examiner does
not cite prior art.
Appellants' claimed invention is directed to a process for
preparing a polyolefin molding composition comprising at least
Appeal No. 2005-1211
Application No. 08/120,105
-2-
two polyolefinic components having melting points that differ by
at least 5°C. The composition is characterized by a broad,
bimodal or multimodal melting range in a DSC spectrum.
Appealed claims 15, 17-19, 21-25 and 27-32 stand rejected
under 35 U.S.C. § 112, first paragraph. The appealed claims also
stand rejected under 35 U.S.C. § 112, second paragraph.
In accordance with the grouping of claims set forth at
page 5 of appellants' Brief, claims 15, 17-19, 21-25 and 27-31
stand or fall together. Claim 32 is grouped separately.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we concur
with the examiner that the claimed subject matter runs afoul of
the first and second paragraphs of 35 U.S.C. § 112. Accordingly,
we will sustain the examiner's rejections.
We consider first the examiner's rejection of the appealed
claims under § 112, first paragraph. At the outset, we do not
subscribe to the examiner's reasoning that the claim 17
recitation "melting range in a DSC spectrum determined with a
heating/cooling rate of 20°C/min" does not find descriptive
support in the original specification. We agree with
appellants that the specification disclosure at page 14,
Appeal No. 2005-1211
Application No. 08/120,105
-3-
lines 16-18, adequately describes the claim language. Also, the
Ser van der Ven publication cited by appellants, particularly
page 590, first full paragraph, provides evidence that one of
ordinary skill in the art would have reasonably understood that
the original specification reasonably conveys the claimed concept
of determining the melting range in a DSC spectrum with the
claimed heating/cooling protocol.
However, we agree with the examiner that the specification
does not adequately describe (§ 112, first paragraph) and
particularly point out (§ 112, second paragraph) the claimed
"half-intensity width of the melting peak is broader than 10°C
and the width determined at quarter peak height is greater than
15°C" with respect to the recited broad, bimodal, or multimodal
melting range. We concur with the examiner that "[t]he
specification never teaches what 'the peak' references in the
melting ranges which are bimodal or polymodal, which by
definition have more than one peak" (page 4 of Answer, second
paragraph). Also, we agree with the examiner that "there is no
teaching as to how half widths and quarter widths are determined
for melting peaks which are not completely resolved" (id.).
Furthermore, inasmuch as a bimodal or multimodal melting range
would have more than one melting peak, the examiner properly
Appeal No. 2005-1211
Application No. 08/120,105
-4-
notes that "it is indefinite as to which peak either 'the peak'
or 'the melting peak' refers" (page 4 of Answer, last paragraph).
While appellants rely upon the cited ISO 3146 publication as
evidence that one of ordinary skill in the art would understand
the scope of the claimed subject matter, the examiner has
accurately pointed out that the ISO publication is not describing
a bimodal or multimodal composition. Neither appellants'
specification, nor any reference cited by appellants, describes
how one of ordinary skill in the art would determine the claimed
half-intensity width of the melting peak and the quarter peak
height. Appellants' analysis based on "logic" does not have the
requisite factual support, such as, for example, a declaration by
one of ordinary skill in the art.
As for the § 112, second paragraph rejection, it should be
evident from our discussion above that we find that the appealed
claims are indefinite in setting forth the metes and bounds of
the subject matter within the scope of the appealed claims.
Also, while we agree with the examiner that the claim language
"the peak in the melting range has a maximum and can be bimodal
or multimodal" is indefinite because bimodal and multimodal
compositions admittedly contain more than one peak, we concur
with appellants that the definitions of R3 and R4 reasonably
Appeal No. 2005-1211
Application No. 08/120,105
-5-
apprise one of ordinary skill in the art of the compounds
associated with the claimed metallocenes of formula I.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv) (effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-1211
Application No. 08/120,105
-6-
Connolly, Bove, Lodge & Hutz, LLP
P.O. Box 2207
Wilmington, DE 19899
Appeal No. 2005-1211
Application No. 08/120,105
-1-
APPENDIX
17. A process for the preparation of a polyolefin molding
composition comprising at least two polyolefinic components,
wherein the composition is characterized by a broad,
bimodal, or multimodal melting range in a DSC spectrum
determined with a heating/cooling rate of 20°C/min wherein
the peak in the melting range has a maximum and can be
bimodal or multimodal and the maximum of the peak in the
melting range is between 120 and 165°C, the half-intensity
width of the melting peak is broader than 10°C and the width
determined at quarter peak height is greater that 15°C,
wherein such process comprises the direct polymerization of
propylene or copolymerization of propylene with olefins of
the formula RaCH=CHRb, in which Ra and Rb are identical or
different and are a hydrogen atom or an alkyl radical having
2 to 14 carbon atoms wherein the polymerized ethylene
content of the resulting polyolefin composition is from 0 to
2.5% by weight,
to at least two polyolefins of different melting points,
wherein the melting points of the polyolefins must differ by
at least 5°C, and wherein the polymerization is carried out
at a temperature of from -60 to 200°C, and a pressure of
Appeal No. 2005-1211
Application No. 08/120,105
-2-
from 0.5 to 100 bar, in solution, in suspension or in the
gas phase, in the presence of a catalyst, wherein the
catalyst comprises
(A) at least two racemic or s-symmetric metallocenes
as transition-metal components and an aluminoxane of the
formula II
and/or of the formula III
where in the formulae II and III, the radicals R may be
identical or different are a C1-C6-alkyl group, a C1-C6-
fluoroalkyl group, a C6-C18-aryl group, a C6-C18-fluoroaryl
group or hydrogen, and n' is an integer from 0 to 50, and
the aluminoxane component may additionally contain a
compound of the formula AlR3, or
Appeal No. 2005-1211
Application No. 08/120,105
-3-
(B) at least two racemic or s-symmetric metallocenes as
transition-metal components and a salt-like compound of the
formula RxNH4-x or of the formula R3PHBR'4 wherein x is 1, 2
or 3, R is identical or different and is alkyl or aryl, and
R' is aryl, which may also be fluorinated or partly
fluorinated,
where the transition-metal component used comprises at
least two metallocenes of the formula I:
in which
M1 is Zr or Hf,
R1 and R2 are identical or different and are a hydrogen
atom, a C1-C10-alkyl group, a C1-C10-alkoxy group, a C6-
C10-aryl group, a C6-C10-aryloxy group, a C2-C10-alkenyl
group, a C7-C40-arylalkyl group, a C7-C40-alkylaryl
group, a C8-C40-arylalkenyl group, or a halogen atom,
R3 and R4 are identical or different and are indenyl,
cyclopentadienyl or fluorenyl which are optionally
substituted with substituents as defined for R11 and R12
Appeal No. 2005-1211
Application No. 08/120,105
-4-
and where the substituents are identical or different
or form together with the atoms connecting them a ring,
R5 is
R11
*
-M2- or
*
R12
R11
*
-C-,
*
R12

where R11 and R12 are identical or different and are a
hydrogen atom, a halogen atom, a C1-C10-alkyl group, a
C1-C10-fluoroalkyl group, a C6-C10-aryl group, a C6-C10-
fluoraryl group, a C1-C10-alkoxy group, a C2-C10-alkenyl
group, a C7-C40-arylalkyl group, a C8-C40-arylalkenyl
group or a C7-C40-alkylaryl group, or R11 and R12
together with the atoms connecting them, form a ring,
M2 is silicon or germanium,
R8 and R9 are identical or different and are as defined for
R11 and m and n are identical or different and are zero or 1
and wherein for at least one of the at least two
metallocenes R3 is a substituted indenyl or an optionally
substituted fluorenyl.