Ex Parte Wöhl et al

Patent Trial and Appeal Board

Nov 30, 2018

13985664 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/985,664 09/17/2013
102091 7590 12/04/2018
Cantor Colburn LLP - SABIC Americas
20 Church Street
Hartford, CT 06103
FIRST NAMED INVENTOR
Anina Wohl
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10PERF0005USPCT;Pl 1C016US 6329
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
12/04/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANINA WOHL, WOLFGANG MULLER,
HEINZ BOLT, ANDREAS MEISWINKEL, UWE ROSENTHAL,
BERND MULLER, NORMEN PEULECKE, CHRISTIAN THALLER,
MARCO HARFF, STEPHAN PEITZ, FUAD MOSA,
MOHAMMED H. AL-HAZMI, and SHAHID AZAM
Appeal2018-000968 1
Application 13/985,664
Technology Center 1700
Before JEFFREY T. SMITH, WESLEY B. DERRICK,
and MICHAEL G. McMANUS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-9, 12-14, 16, 17 and 19-21. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
1 SAUDI BASIC INDUSTRIES is identified as the real party in interest.
(App. Br. 2).
2 Claims 10, 11, and 15 have been withdrawn from consideration and claim
18 has been cancelled. (Final Act. 2).
Appeal2018-000968
Application 13/985,664
Appellants' invention is generally directed to a method for preparing a
catalyst composition for the oligomerization of ethylene. (Spec. ,r 2). Claim
1 illustrates the subject matter on appeal and is reproduced below:
1. A method for preparing a catalyst composition for the
oligomerization of ethylene comprising the steps:
a) preparing in a first solvent, a first solution by mixing of a co-
catalyst and a modifier, wherein the co-catalyst is selected from
trialkyl aluminum, alkyl aluminum sesquichloride, dialkyl
aluminum chloride, alkyl aluminum dichloride, wherein alkyl is
methyl, ethyl, isopropyl or isobutyl, methylaluminoxane (MAO)
or mixtures thereof, and wherein the modifier is selected from
ammonium or phosphonium salts having the formula [H4E]X,
[H3ER]X, [H2ER2]X, [HER3JX or [E~]X or_HX or RX with E
= N or P, X = Cl, Br or I and R = alkyl, cycloalkyl, acyl, aryl,
alkenyl, alkynyl or the corresponding bridging di-, tri- or
multiunits, or ammonium or phosphonium salts based on cyclic
amines; and
b) adding a chromium compound and a ligand to the first solution
obtained in step a) to obtain a second solution; and
c) optionally mixing the solution obtained in step b) for 10
seconds to 5 hours.
The Examiner maintains the rejection of claims 1-9, 12-14, 17, and
19-21 as obvious under 35 U.S.C. § I03(a) over Wohl (EP 2239056 Al;
Oct. 13, 2010), in view of Commereuc et al. (US 6,706,657 B2; Mar. 16,
2004).
OPINI0N3
After consideration of Appellants' arguments and evidence and the
Examiner's position in the Final Office Action and Answer, we AFFIRM the
3 Appellants' arguments are principally directed to independent claim 1.
(App. Br. 3-11). Appellants do not present sufficiently separate arguments
addressing the dependent claims. (App. Br. 3-11). We select independent
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Application 13/985,664
obviousness determinations for the reasons provided by the Examiner. We
highlight and address specific findings and arguments for emphasis as
follows.
The Examiner finds Wohl discloses a method of making a catalyst
composition comprising (1) mixing a phosphorus ligand, a modifier of
tetraethylammonium chloride in an aromatic solvent toluene, (2) adding a
co-catalyst (Et3Al or alkyl aluminum chloride) to the solution in (1 ). (Final
Act. 3--4). The Examiner finds Wohl fails to disclose mixing an alkyl
aluminum chloride with Et4NCI as per applicant claim 1, step a). (Final Act.
4). The Examiner finds Commereuc teaches a catalyst for oligomerization of
olefins comprising making a non-aqueous medium with an ionic nature
"molten salt" comprising one quaternary ammonium halide with at least one
aluminum halide. (Final Act. 4). The Examiner determines it would have
been obvious to combine the process step of initiate mixing quaternary
ammonium halide with at least one aluminum halide, such as taught by
Commereuc, with the process of making a catalyst, such as taught by Wohl,
based on the motivation that the resulting catalyst containing the molten salt
is more stable and has a high selectivity for olefin oligomerization. (Final
Act. 4).
Appellants argue the Examiner has relied upon impermissible
hindsight to formulate the obviousness rejection; the Examiner failed to
properly articulate motivation to combine the teachings of Wohl and
Commereuc; and Wohl teaches away from the process of the claimed
claim 1 as representative of the rejected claims and limit our discussion to
independent claim 1. Separate arguments for claims 4 and 21 will be
addressed.
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Application 13/985,664
invention. (App. Br. 3-11).
Appellants argue Wohl teaches away from the process of the claimed
invention and does not specifically disclose preparing in, a first solvent, a
solution of a co-catalyst and a modifier as recited by Claim 1. (App. Br. 3-
4). Appellants specifically argue:
the disclosures in Wohl would have dissuaded the skilled artisan
from combining the process step of mixing to form the "molten
salt" type medium of Commereuc with the process of Wohl, as
the difference in the preparation sequence could affect the
catalyst system described in Wohl.
(App. Br. 5).
Appellants also argue that combining the teachings of Wohl and
Commereuc as provided by the Examiner would have destroyed the intent
and changed the principle of operation of these references. (App. Br. 5).
Appellants argue Wohl does not specifically disclose the simultaneous
addition of the chromium compound and the ligand to the first solution
obtained in step (a) as required by claim 4. (App. Br. 11).
We are in complete agreement with the Examiner that the claimed
mixing technique would have been obvious to a person of ordinary skill in
the art in view of the prior art teachings (Final Act. 4 ). Wohl recognizes that
the catalyst system can vary to meet various conditions including the
technical environment, operating conditions as well as optimization for
activity and selectivity. (Wohl ,r 44). Commereuc teaches preparing
oligomerization catalyst in a non-aqueous medium with an ionic nature
"molten salt" comprising one quaternary ammonium halide with at least one
aluminum halide which results in a catalyst that is high activity and stability
over time. A person of ordinary skill in the art would have reasonably
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Application 13/985,664
expected that the known process for forming an oligomerization catalyst as
described by Commereuc would have also been suitable for forming an
oligomerization catalyst as described by Wohl also expecting the resulting
catalyst would have high activity and stability over time. Given these
teachings, we conclude that the discovery of the suitable mixing schemes
and sequences for combining quaternary ammonium halide with at least one
aluminum halide in Wohl, from a finite and limited number of possibilities,
would have been within the technical grasp of a person of ordinary skill in
the art. See KSR Int'! v. Teleflex, Inc., 550 U.S. 398,421; In re Hampel, 162
F .2d 483, 485 ( CCP A 194 7); See also In re Burhans, 154 F .2d 690, 692
( CCP A 1946) ("There is no merit in the point here [ that the references do
not teach his characteristic steps which are new in the art and which are
necessary to obtain the desired result] in the absence of any proof in the
record that the order of performing the steps produces any new and
unexpected results."). Appellants have not directed us to evidence to
support the argument that Wohl would have dissuaded a person skilled in the
art from a process step of mixing to form a molten salt type medium.
Appellants argue that Wohl and Commereuc fail to describe mixing
the solution obtained in step b) [ of the claimed invention] for O. 5 hours to
2.5 hours as specified by claim 21. (App. Br. 8).
A person of ordinary skill in the art would have sufficient skill to
determine the appropriate time for mixing the components of the catalyst
solution. See, e.g., In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
([Applicant's] argument presumes stupidity rather than skill). A conclusion
of obviousness also may be made based on the common knowledge and
commonsense of the person of ordinary skill in the art without any specific
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hint or suggestion in a particular reference. In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969). It cannot be reasonably argued
that one with ordinary skill in the art is so devoid of skill and common sense
that he or she would not have mixed the components of the catalytic solution
for a sufficient time to obtain high activity. Appellants have not directed us
to evidence that establishes the mixing time specified by claim 21 produces
unexpected results.
As to relied on results, e.g., data from Tables 1 and 2 (App. Br. 10-11;
Reply Br. 5), we find no evidence proffered by the Appellants indicating that
the asserted unexpected results are derived from either a direct or an indirect
comparison between the claimed subject matter and the closest prior art,
namely Wohl. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1964). Also, it is not
clear from the showing relied upon in the Specification whether the asserted
unexpected results are due to the claimed mixing sequence as alleged. In re
Heyna, 360 F.2d 222,228 (CCPA 1966); In re Dunn, 349 F.2d 433,439
(CCPA 1965) ("While we do not intend to slight the alleged improvements,
we do not feel it an unreasonable burden on appellants to require
comparative examples relied on for non-obviousness to be truly
comparative. The cause and effect sought to be proven is lost here in the
welter of unfixed variables."). Moreover, the showing referred to in the
Specification is not commensurate in scope with the protection sought by
claims 1 and 4 on appeal. While the Appellants contend that the conditions
of combining the elements of the catalytic system are critical to obtaining
unexpected results, claims 1 and 4 are not limited to the conditions presented
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and Tables 1 and 2 of the Specification. In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983).
Under these circumstances, it cannot be said that the Appellants have
demonstrated that the claimed subject matter achieves unexpected results
relative to the subject matter exemplified in Wohl. In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973).
Thus, based on the totality of record, including due consideration of
the Appellants' arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the subject matter recited in claims 1-9, 12-14, 16, 17, and 19-21 within the
meaning of 35 U.S.C. § 103(a).
DECISION
The appealed prior art rejection of claims 1-9, 12-14, 16, 17, and 19-
21 under 35 U.S.C. § 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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