Ex Parte Zhang et al

Patent Trial and Appeal Board

May 20, 2016

12861349 (P.T.A.B. May. 20, 2016)

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.
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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,
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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,"
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"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
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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
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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 ....
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REVERSED
37 C.F.R. § 41.50(b)
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