Ex Parte Zahalka et al

Board of Patent Appeals and Interferences

Mar 20, 2009

10860706 (B.P.A.I. Mar. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HAYDER ZAHALKA, CARLOSS L. GRAY, VAIKUNTH S. PRABHU and MARSHALL D. MOORE ____________________ Appeal 2009-2214 Application 10/860,706 U.S. Patent Publication 2005/0009967 Technology Center @1700 ____________________ Decided: March 20, 20091 ____________________ Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and RICHARD E. SCHAFER and SALLY GARDNER LANE, Administrative Patent Judges. McKELVEY, Senior Administrative Patent Judge. DECISION ON APPEAL 1 1 The two-month time period (37 C.F.R. § 1.304) for filing an appeal (35 U.S.C. § 141) or commencing a civil action (35 U.S.C. § 145) begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-2214 Application 10/860,706 2 A. Statement of the case 1 Chemtura Corporation ("Chemtura"), the real party in interest, seeks 2 review under 35 U.S.C. § 134(a) of a final rejection (mailed 18 October 3 2007). 4 Claim 8-9, 14-23, 26-28 and 30-34 are in the application. 5 All the claims are rejected as being unpatentable under 35 U.S.C. 6 § 103 over the prior art: 7 Mahood 1 5,424,348 13 Jun 1995 Mahood 2 5,468,895 21 Nov 1995 Prabhu 1 5,618,866 08 Apr 1997 Iwasa 6,911,253 B2 28 Jun 2005 Gralinski 6,924,351 B2 02 Aug 2005 Prabhu 2 2004/0142170 A1 22 Jul 2004 General Electric Co. EP 0 635 512 A1 25 Jan 1995 8 Mahood 1, Mahood 2, Prabhu 1 and General Electric Co. are prior art 9 under 35 U.S.C. § 102(b). 10 Iwasa, Gralinski and Prabhu 2 are prior art under 35 U.S.C. § 102(e). 11 Chemtura has not attempted to antedate Iwasa, Gralinski or Prabhu 2. 12 Accordingly, we treat all the references cited by the Examiner as prior art. 13 We have jurisdiction under 35 U.S.C. § 134(a). 14 15 Appeal 2009-2214 Application 10/860,706 3 B. Findings of fact 1 The following findings of fact are supported by a preponderance of 2 the evidence. 3 References to the specification are to U.S. Patent Publication 4 2005/0009967 A1. 5 To the extent that a finding of fact is a conclusion of law, it may be 6 treated as such. 7 Additional findings as necessary appear in the Discussion portion of 8 the opinion. 9 The invention 10 The invention relates to compositions and stabilizers 11 for polymeric resin compositions. Specification, ¶ 0002. 12 The need for stabilization of polymeric compositions is known. The 13 use of compounds such as hydroxyl amines, amine oxides, lactones, 14 hindered phenolics, and phosphites as stabilizers is well known. 15 Specification, ¶ 0003. 16 The invention also relates to polymeric compositions comprising a 17 stabilizing effective amount of a low odor or no odor neo diol phosphite 18 stabilizer prepared by a direct or solvent-less process. Specification, ¶ 0016 19 A number of resins, also referred to as polymeric resins, may be 20 stabilized by the phosphites of the invention. The polymers may be any 21 thermoplastic known in the art, such as polyolefin homopolymers. 22 Specification, ¶ 0064. 23 Polymers of monoolefins for use in the invention include polyethylene 24 (which optionally can be crosslinked). Specification, ¶ 0065. 25 Appeal 2009-2214 Application 10/860,706 4 Example 3 describes preparation of 2,4-di-tert-butylphenyl-(2-butyl-2-1 ethyl-1,3-propanediol)phosphite. Specification, ¶¶ 0017 through 0121. 2 The phosphite is referred to elsewhere in the record as Phosphite-1. 3 Specification, ¶ 0131. 4 The phosphite has the formula: 5 6 C(CH3)3 (CH3)3C O P O CH2 C C H2 O CH2 CH3 C H2 H2 C C H2 H3C 7 Various examples in the specification are said to show that use of 8 Phosphite-1 with polyethylene yields unexpected results. 9 For example, Table 3 describes results using Phosphite-1 with "a 10 Ziegler catalyzed LLDPE." Specification, ¶ 0129. The Ziegler-Natta 11 catalyst used to make the LLDPE is not described. Nor could one skilled in 12 the art reproduce the experimental work embodied in Table 3-because one 13 skilled in the art would not know precisely what polyethylene was used. 14 Another feature revealed by Table 3 is that different batches of 15 Phosphite-1 produced different results. Compare Phosphite-1 with 16 Phosphite-1*. 17 Appeal 2009-2214 Application 10/860,706 5 Example 17 describes "a chromium catalyzed high density 1 polyethylene resin (Cr-HDPE)" which is said to have been tested with 2 Phosphite-1. One skilled in the art could not reproduce the results described 3 in the specification because neither the Cr-catalyst nor the precise nature of 4 the HDPE are described. Specification, ¶ 0142. 5 Example 19 describes "a metallocene-catalyzed liner low density 6 polyethylene resin (m-LLDPE)" which is said to have been tested with 7 Phosphite-1. Specification, ¶ 0155. One skilled in the art would not be able 8 to reproduce the polyethylene resin because the metallocene catalyst used is 9 not described. Nor does LLDPE per se describe the characteristics of the 10 polyethylene. 11 According to Chemtura, polymer performance evaluation employing a 12 phosphite within the scope of the invention demonstrated a better balance of 13 properties and exhibited improved performance attributes in a wide range of 14 polyolefins, such as Cr-HDPE, ZN-LLDPE, and m-LLDPE [Cr = chromium, 15 ZA = Ziegler-Natta and m = metallocene]. Specification, ¶ 0162. 16 Chemtura goes on to say that generally, for applications, e.g., film, where 17 gas fading properties are an important criterion, the phosphite of the present 18 invention showed superior color retention when the polymer samples were 19 exposed to NOx gases. That is, it is said that optimal performance for a 20 given application can be achieved with this tailor-made liquid phosphite for 21 better performance, less 22 discoloration during processing, NOx exposure, and thermal aging. 23 Furthermore, the phosphite of the present invention is said to possess an 24 excellent balance of properties and performance in polyolefins at half the 25 Appeal 2009-2214 Application 10/860,706 6 dosing level compared to phosphites outside the scope of the invention. 1 Specification, ¶ 0167. 2 Claim 33 3 Claim 8-9, 14-23, 26-28 and 30-34 are on appeal. 4 Claims 33 and 34 are independent claims. 5 Chemtura does not separately argue the patentability of dependent 6 claims 8-9, 14-23, 26-28 and 30-32 or independent claim 34 apart from 7 independent claims 33. Accordingly, we decide the appeal on the basis of 8 independent claim 33. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 9 Claim 33 reads [bracketed matter and some indentation added]: 10 33. A polymeric composition comprising 11 (a) a polymer selected from the group consisting of: 12 [1] chromium-catalyzed polyethylenes, 13 [2] Ziegler-Natta-catalyzed polyethylenes, 14 [3] single site-catalyzed polyethylenes, and 15 [4] mixtures thereof and 16 (b) a stabilizing effective amount of an odorless 17 phosphite composition of the formula: 18 19 Appeal 2009-2214 Application 10/860,706 7 C(CH3)3 (CH3)3C O P O CH2 C C H2 O CH2 CH3 C H2 H2 C C H2 H3C 1 2 The prior art 3 In light of the arguments made by Chemtura in the Appeal Brief (there 4 is no Reply Brief) and the manner in which we dispose of the appeal, it is 5 necessary to discuss only two of the references relied upon by the Examiner. 6 Another reference is mentioned in the Discussion portion of this opinion. 7 (1) Mahood 1-U.S. Patent 5,424,348 8 As noted by the Examiner, Mahood 1 describes the use of various 9 stabilizers for use in various polymers. 10 One stabilizer has the same structural formula as Crompton's 11 Phosphite-1. Col. 11:30 (while not using the same convention we use to 12 reproduce Phosphite-1, the Mahood 1 formula is the same). 13 One of the polymers which can be stabilized is described as 14 "polyethylene …, for example high density polyethylene (HDPE), low 15 density polyethylene (LDPE) and linear low density polyethylene (LLDPE). 16 Col. 5:30-33. 17 (2) Iwasa 18 Appeal 2009-2214 Application 10/860,706 8 Iwasa, like Mahood 1, describes stabilization of polymers with 1 stabilizers. 2 One stabilizer is (2,4-di-tert-buylphenyl)-(2-ethyl-2-buyl-1,3-3 propanediol)-phosphite. Col. 7:20-21. 4 One polymer is an ethylene-base resin, including high density 5 polyethylene and middle density polyethylene. Col. 3:2-4. 6 Examiner's rejection 7 In essence, the Examiner found that Chemtura is using known 8 stabilizers in a known manner to stabilize knows polyethylenes. Examiner's 9 Answer, page 3. 10 With respect to experimental data in the specification, in the Final 11 Rejection, the Examiner states (page 2): 12 Applicants[‘] are correct, the Examples in the … specification 13 prove the superiority of applicants' phosphite, but that is not the 14 point. 15 Chemtura's argument on appeal 16 Chemtura does not seem to take issue with the Examiner's findings 17 insofar as prima facie case of obviousness is concerned. Rather, Chemtura 18 maintains that the use of its Phospite-1 yields unpredictable results. 19 In its Appeal Brief, Chemtura notes that the Examiner found superior 20 results in the experimental data in the specification. Appeal Brief, pages 5-21 6. 22 Examiner's further observations 23 The Examiner's ultimate position on unpredictable, i.e., unexpected, 24 results is not entirely clear. 25 Appeal 2009-2214 Application 10/860,706 9 On the one hand, in the Final Rejection, the Examiner seems to have 1 been convinced that superior results were established. 2 On the other hand, in the Examiner's Answer, the Examiner states 3 (page 5) "[n]o unexpected results were shown." 4 There is no Reply Brief. 5 6 C. Discussion 7 The alleged unexpected results 8 (1) 9 An applicant must establish unexpected results by "conclusive 10 evidence", to quote McClain v. Ortmayer, 141 U.S. 419, 429 (1891), or by 11 clear and convincing evidence, to quote (1) In re Passal, 426 F.2d 409, 412 12 (CCPA 1970), (2) In re Heyna, 360 F.2d 222, 228 (CCPA 1966) and (3) In 13 re Lohr, 317 F.2d 388, 392 (CCPA 1963). 14 The clear and convincing evidence standard is appropriate because of 15 the ex parte nature of patent examining and the inability of an examiner to 16 perform experiments given the USPTO does not have a laboratory or other 17 personnel and financial resources for doing so. 18 The data in the specification falls short of a clear and convincing 19 showing-and indeed does not meet even a preponderance of the evidence 20 standard. 21 Appeal 2009-2214 Application 10/860,706 10 (2) 1 All experimental work appears to have been conducted with 2 Phosphite-1. Phosphite-1 is made according to a process set out in Example 3 3. Specification, ¶ 0116. According to the specification, when Postphite-1 4 is made according to Chemtura's "direct/solvent-less process", a phosphite 5 stabilizer is obtained "that has a low odor or no odor." Specification, ¶ 0044. 6 Further according to the specification, '[a] low odor phosphite stabilizer 7 would be an advancement in the art" and the inventors "have developed a 8 solvent-less process for making neo diol phosphite esters for phosphite 9 stabilizer products with surprisingly low odor levels." ¶ 0012. Claim 33 is 10 not limited to a phosphite made by direct/solvent-less process. Rather, the 11 phosphite of claim 33 reads on those described by Mahood 1 and Iwasa. 12 Chemtura’s has failed to convincingly establish on this record that the 13 phosphites of Mahood 1 and Iwasa are not odor free. 14 (3) 15 As noted in the findings, one skilled in the art could not repeat the 16 experimental work set out in the specification. A showing which cannot be 17 repeated is entitled to little, if any, weight and surely does not rise to 18 establishing unexpected properties by clear and convincing evidence. 19 (4) 20 Chemtura has not told the USPTO the extent to which polyethylenes 21 made with a Ziegler-Natta catalyst can vary. 22 Reference to standard polymer textbooks would immediately advise 23 one skilled in the art that the properties of a polyethylene made with a 24 Ziegler-Natta catalyst can vary depending on the specific Ziegler-Natta 25 Appeal 2009-2214 Application 10/860,706 11 catalyst used. See, e.g., Stevens, Polymer Chemistry-An Introduction, 1 ISBN 0-19-505759-7, pages 273-76 (2d ed. 1990). On the record before the 2 USPTO, one skilled in the art cannot tell whether the alleged "surprising" 3 results are a function of the nature of the polyethylene or the manner in 4 which Phospite-1 is made or both. 5 Similar observations can be made about polyethylene made with 6 metallocene (single-site) and chromium (Phillips) catalysts. 7 Assuming that Chemtura gets the results it says it gets with one 8 Ziegler-Natta catalyst produced polyethylene, there is no basis for assuming 9 that the showing is commensurate in scope with the claimed "Ziegler-Natta-10 catalyzed polyethylenes." See, e.g., In re Grasselli, 713 F.2d 731, ___ (Fed. 11 Cir. 1983) and In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978). Similar 12 observations can be made with respect to the breadth of "single site-13 catalyzed polyethylenes" and chromium-catalyzed polyethylenes." The 14 commensurate in scope issue becomes even more complicated when one 15 takes into account that "polyethylenes" in claim 33 (1) may or may not be 16 cross-linked or (2) may be co-polymers with other olefin monomers, e.g., 17 ethylene/butane-1. Specification, ¶ 0065. 18 (5) 19 In Table 3, results are described using two batches of Phosphite-1. 20 The results are not the same for Examples 10 and 11 (said to represent the 21 invention [Specification, ¶ 0133]). It may be the case that results are within 22 an experimental error factor. If so, the USPTO has not been favored with 23 any Rule 132 testimony which would establish what might be an acceptable 24 experimental error in the relevant field. 25 Appeal 2009-2214 Application 10/860,706 12 It is also apparent that the Table 3 results from Example 5 (said to be 1 prior art [Specification, ¶ 0130]) do not appear to be significantly different 2 from the results of Examples 10 and 11. To the extent that the numerical 3 results are different, the USPTO has not been favored with Rule 132 4 testimony explaining the significance of any difference. A party alleging 5 unexpected results has the burden of proving (not just asserting in the 6 specification) that the results are indeed unexpected. See, e.g., In re Geisler, 7 116 F.3d 1465, 1469-70 (Fed. Cir. 1997) and In re Klosak, 455 F.2d 1077, 8 1080 (CCPA 1972) (any difference in results must be shown to be an 9 unexpected difference). 10 (6) 11 Whether unexpected results have been shown is a factual matter. See 12 e.g., (1) In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); (2) In re Inland 13 Steel Co., 265 F.3d 1354, 1366 (Fed. 2001) (unexpected results is a factual, 14 evidentiary inquiry and the Board is given broad deference in its weighing of 15 the evidence before it) and (3) In re Geisler, 116 F.3d at ___. 16 On this record, we find that Chemtura has not factually established 17 that the claimed invention produces any unpredictable or unexpected result. 18 Examiner's obviousness holding 19 While we disagree with some of the Examiner's rationale, we agree 20 with the Examiner's overall determination that, on this record, the subject 21 matter of claim 33 would have been obvious within the meaning of § 103. 22 The Examiner found that Gralinski shows the equivalence of 23 polyethylenes made with metallocene, Ziegler-Natta or chromium catalysts 24 vis-à-vis those made with free-radical initiators. Examiner's Answer, page 25 Appeal 2009-2214 Application 10/860,706 13 4. While the Examiner's finding is correct for the use described by 1 Gralinski, it does not necessary follow that all polyethylenes are equivalent 2 for all purposes. A catalyst can have a significant effect on the properties of 3 a polyethylene. 4 At the end of the day, what the Examiner correctly determined was 5 that Chemtura is using a known phosphite for its intended purpose as a 6 stabilizer in a polyethylene-all as clearly established by Mahood 1 and 7 Iwasa. In other words, Chemtura is using a known combination of elements 8 and has failed to establish any unexpected results. Under the circumstances, 9 claim 33 is not patentable under 35 U.S.C. § 103. KSR Int'l Co. v. Teleflex, 10 Inc., 550 U.S. 398, 399, 127 S. Ct. 1727, 1739 (2007); Anderson's-Black 11 Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62 (1969). 12 Chemtura's other arguments 13 We have considered Chemtura’s remaining arguments and find none 14 that warrant reversal of the Examiner’s rejections. Cf. Hartman v. 15 Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 16 D. Decision 17 Chemtura has not sustained its burden on appeal of showing that the 18 Examiner erred in rejecting the claims on appeal as being unpatentable under 19 35 U.S.C. § 103 over the prior art. 20 On the record before us, Chemtura is not entitled to a patent 21 containing claims 8-9, 14-23, 26-28 or 30-34. 22 Appeal 2009-2214 Application 10/860,706 14 Upon consideration of the appeal, and for the reasons given herein, 1 it is 2 ORDERED that the decision of the Examiner rejecting 3 claims 8-9, 14-23, 26-28 and 30-34 over the prior art is affirmed. 4 FURTHER ORDERED that since our rationale for affirmance 5 differs from the rationale of the examiner, our affirmance is designated as a 6 new rejection. 37 C.F.R. § 41.50(b) (2008). 7 FURTHER ORDERED that our decision is not a final agency 8 action. 9 FURTHER ORDERED that within two (2) months from the 10 date of our decision appellant may further prosecute the application on 11 appeal by exercise one of the two following options: 12 1. Request that prosecution be reopened by submitting 13 an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1) (2008). 14 2. Request rehearing on the record presently before the 15 Board. 37 C.F.R. § 41.50(b)(2) (2008). 16 FURTHER ORDERED that no time period for taking any 17 subsequent action in connection with this appeal may be extended under 18 37 C.F.R. § 1.136(a)(1)(iv) (2008). 19 AFFIRMED New ground of rejection-37 C.F.R. § 41.50(b) (2008) Appeal 2009-2214 Application 10/860,706 15 MAT cc (via First Class mail) Michael P. Dilworth CROMPTON CORPORATION Benson Road Middlebury CT 06749 Tel: 202-429-4560 Paul Grandinetti, Esq. Levy & Grandinetti P.O. Box 18385 Washington, D.C. 20036-8385