Ex Parte Zhang et alDownload PDFPatent Trial and Appeal BoardMay 20, 201612861349 (P.T.A.B. May. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/861,349 08/23/2010 Lei Zhang 25264 7590 05/23/2016 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 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. COS-1253 RCE 1863 EXAMINER ENG, ELIZABETH ART UNIT PAPER NUMBER 1762 MAILDATE DELIVERY MODE 05/23/2016 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 LEI ZHANG, KENNETH BLACKMON, and DAVID RAUSCHER Appeal2014-003009 Application 12/861,349 Technology Center 1700 Before HUBERT C. LORIN, ROMULO H. DELMENDO, and DEBORAH KATZ, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C. § 134(a) from a final decision of the Primary Examiner to reject claims 1---6 and 8-29. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, but enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 The Appellants state that "FINA TECHNOLOGY, INC." is the real party in interest (Appeal Brief filed August 7, 2013, hereinafter "Appeal Br.," 5). Appeal2014-003009 Application 12/861,349 BACKGROl.J1'-JD The subject matter on appeal relates to a method for forming a Ziegler-Natta type catalyst and to a method of its use in olefin polymerization (Specification, hereinafter "Spec.," i-f 1 ). Details of the appealed subject matter are recited in representative claim 1, which is reproduced below from page 15 of the Appeal Brief (Claims App.): 1. A method of forming a catalyst comprising: contacting an alkyl magnesium compound with a viscosity modifier prior to contact with an alcohol to form a magnesium dialkoxide compound; contacting the magnesium dialkoxide compound with a first titanium alkoxide and a first agent to form a first solution reaction product "A", wherein the first titanium alkoxide and the first agent are non-blended individual components prior to contacting the magnesium dialkoxide; contacting the first solution reaction product "A" with a second titanium alkoxide to form a second solution reaction nroch1ct "R": r - - -- -- - - - ' contacting the second solution reaction product "B" with a second agent to form a first solid reaction product "C"; contacting the first solid reaction product "C" with a third agent to form a second solid reaction product "D"; and contacting the second solid reaction product "D" with a reducing agent to form a catalyst component. THE REJECTION The Examiner rejected claims 1---6 and 8-29 under 35 U.S.C. § 103(a) as being unpatentable over Vizzini et al ("Vizzini") 2 and Gray et al. ("Gray"). 3 (Examiner's Answer entered November 8, 2013, hereinafter 2 US 2007 /0299224 A 1, published December 2 7, 2007. 3 US 2007/0003720 Al, published January 4, 2007. 2 Appeal2014-003009 Application 12/861,349 "Ans.," at 2-8; Final Office Action entered ivfarch 13, 2013, hereinafter "Final Act.," 3-9.) DISCUSSION Upon consideration of the evidence on this appeal record in light of the arguments advanced by the Appellants in their briefs, we find that the Appellants have identified reversible error in the Examiner's factual findings and analysis in support of the rejection. Specifically, we reverse the Examiner's 35 U.S.C. § 103(a) rejection for the reasons set forth by the Appellants in the Appeal Brief at 13-14 and the Reply Brief at 7-9 (Reply Brief filed January 7, 2014, hereinafter "Reply Br."). Nevertheless, we add the following comments for emphasis. The Examiner found Vizzini discloses a method for forming a catalyst including each and every limitation of claim 1, except for "contacting an alkyl magnesium compound with a viscosity modifier prior to contact with an alcohol" in the manner as recited by the claims (Ans. 3). To remedy this deficiency, the Examiner relied upon Gray, finding that it "teaches contacting triethylaluminum[, which is one of the viscosity modifiers listed in claim 5,] with dialkylmagnesium prior to contacting with alcohol ... in order to prevent a dramatic increase in viscosity of the solution while forming the magnesium dialkoxide due to the association between the individual magnesium alkyl molecules" (id. at 3) (internal citations omitted). The Examiner then concluded that "[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Vizzini et al. and Gray et al. for the expected benefit of preventing a dramatic increase in viscosity when forming the magnesium dialkoxide of Vizzini et al." (Id. at 3). Specifically with respect to Vizzini, 3 Appeal2014-003009 Application 12/861,349 the Examiner found that "Vizzini teaches that TiCl4 is added to reaction mixture 'B' to form solid reaction product 'C,' and then immediately adding TiCl4 to solid reaction product 'C' to form solid reaction product 'D"' (Ans. 9, internal citations omitted). Thus, the Examiner concluded that "[t]here is only one step of adding the claimed third agent, TiCl4, to solid reaction product 'C' to form solid reaction product 'D"' (id.). The Appellants contend that the Examiner failed to establish a prima facie case of obviousness because, contrary to the instant claims which requires the second solid reaction product to be contacted with a reducing agent, "Vizzini teaches formation of three solid reaction products prior to contact with a reducing agent to form a catalyst component" (App. Br. 14). The Appellants argue that the Examiner "has disregarded the initial contact with TiCl4 and the first produced solid reaction product taught in the preparation scheme." (Reply Br. 7). We agree with the Appellants and find the Examiner's findings related to Vizzini are misplaced. As persuasively explained by the Appellants (App. Br. 13-14), Vizzini discloses addition of TiCl4 in three independent steps resulting in precipitation of three independent solid reaction products (i-fi-f 142-144). As found by the Examiner (Ans. 2), Vizzini discloses forming the Appellants' "second solution reaction product 'B"' by contacting the first solution reaction product A with a second titanium alkoxide, tetra n-butyl titanate or TNBT, as required by the claims (i-fi-f 117, 142). However, subsequent to the formation of this "second solution reaction product 'B' ," the preparation scheme as outlined by Vizzini discloses the addition of three separate TiCl4 agents to form three independent solid reaction mixtures-namely "reaction mixture B," 4 Appeal2014-003009 Application 12/861,349 "reaction mixture C," and "reaction mixture D" (ifif 142-144). Therefore, Vizzini's preparation scheme, as relied on by the Examiner, contacts the solid produced in paragraph 143, the second solid formed, with a "fourth" agent to form a third solid reaction product in paragraph 144. It is this third solid reaction product that is contacted with a reducing agent to form a catalyst component (i-f 145). Therefore, we find that the cited preparation scheme of Vizzini, as relied on by the Examiner, fails to constitute a disclosure of "contacting the second solid reaction product 'D' with a reducing agent to form a catalyst component" in the manner required by the claims. Additionally, the Examiner has failed to direct us to a teaching, nor can we independently locate such a teaching, that Vizzini' s "reaction mixture B" can reasonably be considered the Appellants' "second solution reaction product 'B"' as relied on by the Examiner. As explained by the Appellants (Reply Br. 7), the first addition of TiCl4 during the formation of "reaction mixture 'B "' is used to form a solid precipitate, which is later suspended in hexane (i-f 142). Therefore, we find that Vizzini suggests to one of ordinary skill in the art that "reaction mixture 'B"' is a suspension of solids in hexane and not a solution as required by the claims (i-fi-f 142-143). For these reasons, we cannot affirm the Examiner's rejection. NEW GROUNDS OF REJECTION We enter the following new ground of rejection, which is based on new factual findings and reasoning. In re Leithem, 661 F .3d 1316, 1319 (Fed. Cir. 2011) ("Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of 5 Appeal2014-003009 Application 12/861,349 rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner."). Claims 1-6 and 8-29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Vizzini with Gray. Although the Examiner failed to establish a prima facie case of obviousness, as discussed supra, a person of ordinary skill in the art would have been prompted to combine the third and fourth agents in view of Vizzini' s explicit teachings, thus arriving at a method encompassed by the Appellants' claimed subject matter. Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious."). Specifically, Vizzini states "it is contemplated that any of the agents described herein may be added in combination with one another ... [f]or example, the third and fourth agents may be added to reaction product B at the same time to form reaction product D" (i-f 34). Thus, it would have been obvious to a person of ordinary skill in the art to combine the third and fourth agents, as described in paragraphs 143 and 144 respectively, during the preparation of catalyst D and add them at the same time to form reaction product D because Vizzini explicitly discloses such an combination of agents is a predictable variation. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 ("If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability."). Additionally, the Appellants have not identified reversible error in the Examiner's factual findings, analysis and conclusions of obviousness with respect to the combination of Gray and Vizzini. Therefore, in view of the 6 Appeal2014-003009 Application 12/861,349 lack of any argument or factual evidence to the contrary, we share the Examiner's conclusion that it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Vizzini and Gray for substantially the same reasons as set forth by the Examiner in the Answer. Under these circumstances, we conclude that a person of ordinary skill in the art would have found the subject matter of claims 1---6 and 8-29 obvious in view of Vizzini and Gray within the meaning of 35 U.S.C. § 103(a). SUMMARY The Examiner's stated rejection of claims 1---6 and 8-29 under 35 U.S.C. § 103(a) is reversed. Claims 1---6 and 8-29 are newly rejected, as discussed above. 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner .... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... 7 Appeal2014-003009 Application 12/861,349 REVERSED 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation