Ex Parte Eaton et al

Board of Patent Appeals and Interferences

Feb 12, 2009

10242893 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERALD B. EATON
and ALAN K. EBERT
____________

Appeal 2008-5524
Application 10/242,893
Technology Center 1700
____________

Decided:1 February 12, 2009
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, 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 2008-5524
Application 10/242,893

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 24-31. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a polymerization reaction injection system
which effectively combines polymerization reactants without the need for a
mixing tank, mechanical mixers, or other mechanical agitating devices by
injecting one reactant stream into another reactant stream via a fluid
parameter differential, e.g., the streams have different pressure, velocity or
temperature. (Spec. 4, ll. 3-11 and 26-28; 5, ll. 20-22; 9, l. 28 to 10, l. 1).
The invention is particularly suited for the polymerization reaction of alpha
olefin monomers to form drag reducing agents via the reactions disclosed in
U.S. Patent Nos. 6,015,779, 6,162,773, and 6,242,395. (Spec. 11, ll. 17-21).
Claims 24-31 are illustrative of the subject matter on appeal:
24. A method of forming a polyalphaolefin drag reducing agent, the
polyalphaolefin having an inherent viscosity of at least 10 dL/g, the method
comprising the steps of:

combining at least one catalyst at a first fluid parameter with at least
one alpha olefin monomer at a second fluid parameter, wherein the first fluid
parameter and the second fluid parameter form a fluid parameter differential;
and

polymerizing the at least one alpha olefin monomer in the presence of
the at least one catalyst to provide a polyalphaolefin drag reducing agent,
wherein the polyalphaolefin has an inherent viscosity of at least 10 dL/g.

25. The method of claim 24 wherein at least one co-catalyst is
combined with the at least one monomer to form a monomer/co-catalyst
mixture prior to combination with the at least one catalyst.
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26. The method of claim 24, wherein the first fluid parameter is
greater than the second fluid parameter.

27. The method of claim 26, wherein the first fluid parameter is a first
pressure, the second fluid parameter is a second pressure, and the fluid
parameter differential is a pressure differential.

28. The method of claim 26, wherein the first fluid parameter is a first
velocity, the second fluid parameter is a second velocity, and the fluid
parameter differential is a velocity differential.

29. The method of claim 24, wherein the first fluid parameter is less
than the second fluid parameter.

30. The method of claim 29, wherein the first fluid parameter is a first
pressure, the second fluid parameter is a second pressure, and the fluid
parameter differential is a pressure differential.

31. The method of claim 29, wherein the first fluid parameter is a first
velocity, the second fluid parameter is a second velocity, and the fluid
parameter differential is a velocity differential.

Appellants request review of the rejections maintained by the
Examiner, namely:
1. the rejection of claims 24-25 under 35 U.S.C. § 102(b) as
anticipated by U.S. Statutory Invention Registration No. H1388, published
December 6, 1994, in the name of Matlack (hereinafter “Matlack”) and
2. the rejection of claims 26-31 under 35 U.S.C. § 103(a) as
obvious over Matlack.
Appellants provide separate arguments for each of the pending claims.
Thus, we decide this appeal for each pending claim. However, our decision
regarding claims 26-31 rests on the same rationale, thus we discuss our
decision regarding these claims under the same heading.
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I. CLAIM 24
A. ISSUE ON APPEAL
Appellants contend that Matlack does not anticipate claim 24 for the
following reasons:
(a) Matlack discloses only the use of cycloolefins as monomers,
which are not alpha olefin monomers, as recited in claim 24 (App. Br. 14,
Reply Br. 3-4);
(b) Matlack does not disclose the formation of a drag reducing
agent, which is characterized, for example, by having an internal viscosity of
10 decaliters per gram (dL/g) (App. Br. 13, Reply Br. 4 and 7);
(c) Matlack is silent as to the particular parameters of the disclosed
reactant streams, and thus does not disclose the claimed “fluid parameter
differential” (App. Br. 13-14; Reply Br. 2-6); and
(d) Matlack is directed to a reaction injection molding (RIM)
process and not a bulk polymerization process (App. Br. 13).
The Examiner contends that Matlack does, in fact, anticipate claim 24,
and responds to Appellants’ arguments as follows:
(a) the term “alpha olefin monomer” does not exclude cycloolefins
having a double bond in the alpha position, such as styrene (Ans. 4 and 7);
(b) the Examiner has a reasonable basis for believing that the
polymer formed by the process taught by Matlack would function as a drag
reducing agent and feature an inherent viscosity of at least 10 dL/g (Ans. 8
and 9);
(c) Matlack teaches a non-preferred embodiment which would
have a fluid parameter differential in the broad disclosure of reactant streams
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due to the different viscosities of the materials in the streams (Ans. 5, 6, 7,
and 9); and
(d) Matlack is directed to a “reaction injection molding process”
that includes the “polymerization” step, recited in claim 24. (Ans. 8).
Thus, a first issue on appeal arising from the contentions of
Appellants and the Examiner is: have Appellants demonstrated that the
Examiner reversibly erred in finding, as a matter of fact, that claim 24 is
anticipated by Matlack? We answer this question in the negative.
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Appellants’ Specification does not define the term “alpha olefin
monomer.” (See Spec. generally).
2. Appellants’ Specification states that:
[i]n a preferred embodiment, alpha olefin
monomer [sic, is] transported through
polymerization reactant injection system 40 to
form drag reducing agents. In this preferred
embodiment, the polymerization reactants and
methods of forming drag reducing agents disclosed
in U.S. Pat. Nos. 6,015,779, 6,162,773, 6,242,395,
which are hereby incorporated by reference, are
used and carried out using polymerization reactant
injection system.
(Spec. 11, ll. 17-21).
3. Appellants’ Specification states that, in a preferred
embodiment, the alpha olefin monomer is 1-dodecene. (Spec. 16, ll. 19-21).
4. U.S. Patent No. 6,015,779 states that:
[u]seful alpha olefin monomers broadly include
any that are capable of forming a polyalphaolefin
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with the desired properties discussed herein.
Preferably, the alpha olefins have 2 to 20 carbon
atoms. Homopolymers, copolymers and
terpolymers may be used. Preferred alpha olefins
include ethylene, propylene, 1-butene, 4-methyl-1-
pentene, 1-hexene, 1-octene, 1-decene, 1-dodecene
and 1-tetradecene; conjugated or unconjugated
dienes such as butadiene and 1, 4-hexadiene;
aromatic vinyls such as styrene; and cyclic
olefins such as cyclobutene.
(U.S. Patent No. 6,015,779, col. 9, ll. 8-18)(emphasis added).
5. Matlack teaches using “metathesis polymerizable olefin
monomers” generally, and specifically teaches using cycloolefin monomers.
(Matlack, col. 3, ll. 9-14).
6. Matlack discloses that cycloolefins are preferably noroborene
type (double ringed monomers), more preferably dicyclopentadiene (col. 3,
ll. 19-36).
7. Matlack teaches that other monomers can be used in
combination with dicyclopentadiene including styrene. (col. 4, ll. 51-58).
8. Matlack also states that:
[a]ny metathesis polymerizable olefin may also be
polymerized alone or in combination with any one
or more additional metathesis polymerizable
olefins, whether listed above or not. In addition,
other monomers which will vary with the type of
the additional polymerization, may be utilized,
such as: styrenes, vinyl-substituted aromatic
compounds, and methacrylates, which are subject
to free radical polymerization; caprolactone,
hexaalkylcyclotrisiloxane, methacrylates, and
styrenes, which are subject to anionic
polymerization; styrenes, divinylbenzene, α-
methylstyrene, terpenes (such as β-pinene),
diisopropenyl-benzenes, diisobutylene,
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polyisoprene, polybutadienes, polystyrenes,
copolymers of styrene and dienes, polyindanes,
which are subject to polymerization by the
combination of a Lewis Acid catalyst and a Lewis
Acid cocatalyst; and polysiloxanes and
siloxysilanes polymerizable by a hydrosilation
polymerization catalyst. In addition, aromatic
molecules which can be alkylated, such as
hindered phenols, aromatic amines, and
hydrocarbons (such as naphthalene), can be
included.
(col. 5, ll. 16-36).
9. According to Appellants, Appellants’ Specification discloses at
page 11, lines 17-21 that the polyalphaolefin product is a drag reducing
agent having an inherent viscosity of at least 10 dL/g. This portion of
Appellants’ Specification, recited above in FF 2, incorporates by reference a
number of patents including U.S. Patent 6,015,779. (App. Br. 8).
10. U.S. Patent No. 6,015,779 states that:
[t]he term “drag reducing agent” (DRA) as used
herein refers to a composition that includes at least
the formed polyalphaolefin polymer, preferably
made in accordance with the methods described
herein. Preferably, because the polyalphaolefin
polymer of this invention is typically fully
dissolved in the solvent, the “DRA” can also refer
to the entire reactant mixture after sufficient
polymerization has occurred (also referred to as a
“polymerization mixture”), including not only the
polyalphaolefin, but also the solvent, any viscosity
reducing agents and any unreacted monomers. . . .
As discussed below, drag reducing agents reduce
drag and increase the flow rate of hydrocarbons
passing through conduits, particularly crude oil or
refined hydrocarbons passing through pipelines. In
at least one aspect, the DRA can be introduced into
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the conduit to improve flow conditions by
reducing frictional pressure losses, or frictionally
generated energy bursts, associated with
movement of fluid within the conduit. These
frictionally generated energy bursts typically
emanate from throughout the turbulent core of the
flowing hydrocarbons and include lateral turbulent
microbursts generated from or near the conduit
walls. More simply stated, the DRAs tend to
reduce the impact of turbulence through direct
interaction and absorption of some or most of these
energy bursts thus improving flow characteristics
in the conduit. It has been discovered that a DRA
should have the right combination of properties to
provide superior drag reduction and flow
improvement. For example, the DRA should be
non-crystalline and amorphous, preferably having
substantially no solid particles. The DRA also
should have an ultra-high molecular weight, as
discussed above. Finally, the DRA needs to
provide superior flow improvement.
(U.S. Patent No. 6,015,779, col. 4, l. 56 to col. 5, l. 34).
11. U.S. Patent No. 6,015,779 further states that:
[a]nother important aspect of this invention is that
the polyalphaolefin polymer must have an “ultra-
high molecular weight,” a term defined herein as a
molecular weight corresponding to an inherent
viscosity of at least about 10 dL/g. Because of the
extremely high molecular weight of the DRA
polymer, it is difficult to reliably and accurately
measure the actual molecular weight, but inherent
viscosity provides a useful approximation of
molecular weight. For purposes of the present
invention, “inherent viscosity” is measured using a
Cannon-Ubbelohde four bulb shear dilution
viscometer (0.1 g polymer/100 ml toluene at 25º
C.). Inherent viscosities are calculated for each of
the four bulbs. The viscosities are then plotted as a
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function of shear rate. The plot is then used to
determine the inherent viscosity at a shear rate of
300 sec-1. It is contemplated that an inherent
viscosity of 10 dL/g corresponds roughly to a
molecular weight of at least about 10 or 15 million.
Preferably, the ultra-high molecular weight
polyalphaolefins of the present invention have
molecular weights even higher, e.g., greater than
25 million. The polyalphaolefins formed should
also have a narrow molecular weight distribution.
(U.S. Patent No. 6,015,779, co. 6, ll. 15-36).
12. Matlack does not teach that the resultant polymer is a drag
reducing agent. (See Matlack generally).
13. Matlack is silent as to the inherent viscosity of the resulting
polymer. (See Matlack generally).
14. Matlack does not disclose that the polymer formed by the
process is an ultra high molecular weight polymer. (See Matlack generally).
15. Matlack teaches that:
[t]he two reactant streams are combined in the
RIM machine’s mixing head and then injected into
a warm mold where they quickly polymerize into a
solid, infusible mass. The reaction mixture is
preferably allowed to polymerize to a degree of
substantial reaction termination while the reaction
mixture is within the mold, whereby a molded
article is produced, followed by removing the
molded article from the mold.
(Matlack, col. 18, ll. 20-28).
16. According to Appellants’ Specification, “[t]he term ‘fluid
parameter’ as used herein means a characteristic of the polymerization
reactant or polymerization reactant mixture as it is being transported
through, and from, their respective conduits. Fluid parameters include, but
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are not limited to, the pressure, the velocity, and the temperature of the
polymerization reactants and the polymerization reactant mixture.” (Spec. 4,
ll. 3-6).
17. Also, according to Appellants’ Specification:
[t]he term “fluid parameter differential” as used
herein means the difference between identical fluid
parameters of at least two of the polymerization
reactants or at least one of the polymerization
reactants and the polymerization reactant mixture.
Due to the fluid parameter differential, one
polymerization reactant is injected into, or
combined with, at least one other polymerization
reactant to ultimately form the polymerization
reactant mixture.”
(Spec. 4, ll. 7-11))
18. Elsewhere, Matlack teaches that:
[t]he method of the present invention can be
carried out by providing a plurality of reactant
streams, wherein a first reactant stream comprises
the metathesis polymerization procatalyst activator
and a portion of the metathesis polymerizable
olefin, and a second reactant stream comprises the
metathesis polymerization procatalyst and a
portion of the metathesis polymerizable olefin. . . .
The reactant streams are then mixed together,
whereby a reaction mixture is formed. The reaction
mixture is then formed into a desired shape before
the polymerization of the metathesis polymerizable
olefin.
(Matlack, col. 17, ll. 48-64).
19. Matlack also teaches that:
RIM is most conveniently accomplished by mixing
equal parts of two solutions, one of which contains
twice the desired concentration of procatalyst, and
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the other of which contains twice the desired
concentration of the procatalyst activator. It is
preferable, but not necessarily required, that at
least one of the solutions contains a rate
moderator, as described above. Since the reactive
mixture does not gel immediately, the RIM process
can frequently be carried out via the alternative
process of adding one part of the catalyst system
(i.e. either the procatalyst or the procatalyst
activator) to substantially all of the cycloolefin
and, just prior to the polymerization and molding,
mixing in a concentrate of the other part.
(Matlack, col. 17, l. 67 to col. 18, l. 12).
20. Matlack teaches that:
[t]he procatalyst and the procatalyst activator are
each mixed with dicyclopentadiene to form
solutions that are placed in separate vessels. These
containers provide the source for two separate
reactant streams, with each container provided
with a solution of the cycloolefin monomer or
monomers. . . . Similar methods can be utilized for
RIM processes utilizing other metathesis
polymerizable olefins.
(Matlack, col. 18, ll. 15-30).
21. Matlack teaches that:
[t]he reactant streams cannot be so viscous that
adequate mixing of the reactant streams is not
possible. However, increasing the viscosity to
between 300 cps and 1,000 cps improves the mold
filling characteristics of the combined reactant
streams. The elastomer is preferably added to all of
the reactant streams so that the viscosities of the
two reactant streams are similar. When the reactant
streams have similar viscosities, more uniform
mixing is obtained when the reactant streams are
combined.
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(Matlack, col. 20, ll. 3-12).
C. PRINCIPLES OF LAW
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps: (1) interpreting the claim language, where
necessary, giving the claims their broadest reasonable interpretation and (2)
comparing the construed claim to a prior art reference and making factual
findings that “each and every limitation is found either expressly or
inherently in [a] single prior art reference.” In re Crish, 393 F.3d 1253, 1256
(Fed. Cir. 2004)(quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150
F.3d 1354, 1360 (Fed.Cir.1998)). In interpreting claims, “limitations are not
to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993); see also Phillips v. AWH Corp., 415 F.3d
1303, 1323 (Fed. Cir. 2005)(en banc)(“although the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”). In general, a
limitation is inherent if it is the “natural result flowing from” the explicit
disclosure of the prior art. Schering Corp. v. Geneva Pharms., 339 F.3d
1373, 1379 (Fed. Cir. 2003).
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102. In re Schaumann, 572 F.2d
312, 317 (CCPA 1978). Knowledge imputed to one of ordinary skill in the
art by a prior art reference need not be conveyed directly nor must it be the
main topic of discussion within a particular prior art reference. See Merck &
Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989)(A reference may
be relied upon for all that it would have reasonably suggested to one having
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ordinary skill in the art, including non-preferred embodiments); In re Heck,
699 F.2d 1331, 1333 (Fed. Cir. 1983)(Use of a patent as a reference is not
limited to what the patentee describes as their own invention.). What is
important is that there is some evidence indicating that the knowledge was in
the possession of one of ordinary skill in the art. In re Elsner, 381 F.3d
1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d 929, 936 (CCPA
1962)).
Where the Patent Office has reason to believe that a limitation “in the
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on.” In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977); see also In re
Skoner, 517 F.2d 947, 950 (CCPA 1975)(“Appellants have chosen to
describe their invention in terms of certain physical characteristics. . . .
Merely choosing to describe their invention in this manner does not render
patentable their method.”). For example, when patentability rests upon a
property of the claimed material not disclosed within the art, the PTO has no
reasonable method of determining whether there is, in fact, a patentable
difference between the prior art materials and the claimed material. Best,
562 F.2d at 1255 (identifying the “PTO’s inability to manufacture products
or to obtain and compare prior art products.”). When a claimed product
appears to be substantially identical to a product disclosed by the prior art,
the burden is on the Applicants to prove that the product of the prior art does
not necessarily or inherently possess characteristics or properties attributed
to the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990);
Best, 562 F.2d at 1255.
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D. ANALYSIS
Appellants do not provide a clear definition of the term “alpha olefin
monomer” (FF 1 and 3), but rather direct our attention to alternative patents
for descriptions of preferred polymerization reactants. (FF 2). These
alternative patents do not limit the term “alpha olefin monomer” to straight
chain monomers, as argued by Appellants, but indicate that the term includes
aromatic vinyls such as styrene and cyclic olefins such as cyclobutene. (FF
4). Thus, we find the Examiner’s contention that the term “alpha olefin
monomer” includes cycloolefins with a double bond in the alpha position, to
be a reasonable interpretation of the claim language. Since Matlack teaches
that the “metathesis polymerizable olefin monomers” are preferably
cycloolefin monomers and may include styrenes and vinyl substituted
aromatic compounds (FF 5-8), alpha olefin monomers are expressly found in
Matlack with sufficient specificity to anticipate this claim limitation within
the meaning of 35 U.S.C. § 102(b). Crish, 393 F.3d at 1256; Schaumann,
572 F.2d at 317.
Likewise, based on Appellants’ Specification, we rely on the
alternative patents recited in Appellants’ Specification to interpret the
meaning of the terms “drag reducing agent” and “inherent viscosity of at
least 10 dL/g.” (FF 2 and 9). From these alternative patents, we find that a
drag reducing agent is a no more than a polyalphaolefin which is used to
“increase the flow rate of hydrocarbons passing through conduits,
particularly crude oil or refined hydrocarbons passing through pipelines.”
(FF 10). As such, we agree with the Examiner that the claim 24 recitation of
“a polyalphaolefin drag reducing agent” is a statement of intended use of the
polyalphaolefin product formed by the claimed process that does not serve to
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distinguish the claimed polyalphaolefin process from the polyalphaolefin
process of Matlack.
Additionally, Matlack is silent as to whether the polyalphaolefin
product is capable of providing some drag reducing function. (FF 12).
However, the process of forming a polyalphaolefin product appears to be
otherwise substantially identical to the claimed process, and the PTO has no
reasonable method of determining whether or not the polyolefin product is
capable of reducing drag. Thus, the burden shifts to Appellants to
adequately show that the polyalphaolefin product of Matlack is not
inherently capable of providing some drag reducing function. Spada,
911 F.2d at 708; Best, 562 F.2d at 1255; Skoner, 517 F.2d at 950. Without
evidence to the contrary, Appellants have not shown that the Examiner
reversibly erred in finding that the polyolefin product of Matlack is
inherently capable of functioning as a drag reducing agent.
Although U.S. Patent No. 6,015,779 indicates that a drag reducing
agents preferably have the following characteristics: provide superior drag
reduction and flow improvement, non-crystalline and amorphous,
substantially no solid particles, and an ultrahigh molecular weight (FF 10),
none of these characteristics are recited in claim 24 as positive limitations,
nor have Appellants shown or even suggested that any of these
characteristics are critical to a polyalphaolefin being capable of providing
some drag reducing function.
Also, the fact that Matlack teaches a solid, molded polyalphaolefin
product (FF 15) does not preclude Matlack from also inherently teaching a
drag reducing agent. U.S. Patent No. 6,015,779 indicates that, while it is
preferred that the drag reducing agent contain no solid particles, “the
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polyalphaolefin polymer of this invention is typically fully dissolved in the
solvent” such that the drag reducing agent itself includes “not only the
polyalphaolefin, but also the solvent, any viscosity reducing agents and any
unreacted monomers.” (FF 10). Thus, the solid polyalphaolefin product
taught by Matlack may subsequently be dissolved in a solvent to achieve a
drag reducing agent as claimed. Further, there is no indication that the
molded product taught by Matlack could not be used to line a pipeline or
other conduit for transporting hydrocarbons so as to provide some drag
reducing function.
Claim 24 recites “inherent viscosity,” not actual viscosity. (See claim
24). According to U.S. Patent No. 6,015,779, the term “inherent viscosity,”
which is measured in volume per mass, is not equivalent to “viscosity,”
which is measured in mass per distance per time (poise). (FF 11). Rather,
according to U.S. Patent No. 6,015,779, a measurement of “inherent
viscosity” is a means of characterizing the molecular weight of “ultra-high
molecular weight” polymers. (FF 11). We note that claim 24 does not recite
that the polyalphaolefin is an “ultra high molecular weight” polymer.
Matlack is silent as to inherent viscosity and as to the molecular weight of
the polyalphaolefin product. (FF 13-14). However, the process of forming a
polyalphaolefin product appears to be otherwise substantially identical to the
claimed process, and the PTO has no reasonable method of determining
whether or not the polyolefin product has the claimed inherent viscosity.
Thus, the burden shifts to Appellants to adequately show that the
polyalphaolefin product of Matlack does not have an inherent viscosity of
greater than 10 dL/g. Spada, 911 F.2d at 708; Best, 562 F.2d at 1255;
Skoner, 517 F.2d at 950. Appellants have not shown that the Examiner
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reversibly erred in finding that the polyolefin product of Matlack inherently
has an inherent viscosity of greater than 10dL/g.
Appellants’ invention is claimed in terms of a “fluid parameter
differential.” (See claim 24). However, Appellants’ Specification defines a
“fluid parameter” and a “fluid parameter differential” so broadly, that it
could encompass ostensibly any “characteristic” of two reactant streams that
are different, including viscosity or compositional differences such as
concentration of the components in the two reaction streams. (See FF 16
and 17). Matlack expressly teaches that the reactant streams are different in
that they have different components. (FF 18-20). For example, one reactant
stream is an olefin monomer/procatalyst mixture and one reactant stream is
an olefin monomer/procatalyst activator mixture. (FF 18). In other words,
since one stream has a concentration of procatalyst, or alternatively
procatalyst activator, of zero and the other stream has a concentration of
procatalyst, or alternatively procatalyst activator, of greater than zero, the
reactant streams taught by Matlack expressly have a fluid parameter
differential as claimed. Thus, Matlack expressly teaches a fluid parameter
differential within the two reactant streams with sufficient specificity to
anticipate this claim limitation within the meaning of 35 U.S.C. § 102(b).
Crish, 393 F.3d at 1256; Schaumann, 572 F.2d at 317.
Similarly, Matlack inherently teaches that the reactant streams may, in
a non-preferred embodiment, have different viscosities. (FF 21). See Merck,
874 F.2d at 807; Heck, 699 F.2d at 1333. Thus, Matlack, likewise,
inherently teaches reactant streams with a “fluid parameter differential” as
recited in claim 24, in which the fluid parameter is viscosity.
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Finally, claim 24 does not recite that the process must be a bulk
polymerization process, nor does claim 24 include language which precludes
the process from being a reaction injection molding (RIM) process. We
decline to read these requirements into the claim language, as suggested by
Appellants. Van Geuns, 988 F.2d at 1184; Phillips, 415 F.3d at 1323.
Further, Appellants have not demonstrated how the RIM process taught by
Matlack would not include the “combining” or the “polymerizing” steps
recited in claim 24 merely because the process taught by Matlack is an RIM
process rather than a bulk polymerization process.
Thus, for the reasons provide above, Appellants have not
demonstrated that the Examiner reversibly erred in finding, as a matter of
fact, that claim 24 is anticipated by Matlack.
II. CLAIM 25
A. ISSUE ON APPEAL
Appellants contend that Matlack does not teach “a monomer/co-
catalyst mixture prior to being combined at a ‘parameter differential’ with
the catalyst.” (App. Br. 15). The Examiner contends that the claimed co-
catalyst reads on the procatalyst taught by Matlack. (Ans. 7-8).
Thus, a second issue on appeal arising from the contentions of
Appellants and the Examiner is: have Appellants demonstrated that the
Examiner reversibly erred in finding, as a matter of fact, that Matlack
anticipates the claimed “monomer/co-catalyst mixture” recited in claim 25?
We answer this question in the negative.
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above-identified issue on appeal:
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22. Appellants’ Specification does not define the terms “catalyst”
or “co-catalyst” and does not specifically exclude any particular catalytic
material from being either a catalyst or a co-catalyst. (See Spec. generally).
23. U.S. Patent No. 6,015,779 teaches that “[a]n important aspect
of the invention is the ‘catalyst system,’ which, as defined herein, includes a
transition metal catalyst and a co-catalyst mixture.” (U.S. Patent No.
6,015,779, col. 6, ll. 57-60).
24. U.S. Patent No. 6015,779 teaches that preferred co-catalysts
include alkylaluminoxane alone or with another component, such as
diethylaluminum chloride or dibutylaluminum chloride, or a
halohydrocarbon, preferably ethylene dichloride. (U.S. Patent No.
6,015,779, col. 7, ll. 7-15).
25. Appellants’ Specification states that, in a preferred
embodiment, co-catalysts are alkylaluminoxane and ethylene dichloride.
(Spec. 16, ll. 19-21).
26. Appellants’ Specification states that, in a preferred
embodiment, the catalyst is titanium trichloride. (Spec. 16, ll. 19-21).
27. Matlack teaches that the metathesis polymerization procatalyst
activators are alkylaluminum compounds, preferably trialkylaluminum
compounds and diakylaluminum halides. (Matlack, col. 8, ll. 28-33).
28. Matlack teaches that “[s]uitable metathesis polymerization
procatalysts include molybdenum halides and tungsten halides, and their
corresponding oxyhalides, especially those having two valences satisfied by
oxygen rather than halogen. . . . Halides and oxyhalides of still other
transition metals such as rhenium, tantalum, and niobium are also suitable
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for use as metathesis polymerization procatalysts.” (Matlack, col. 5, ll. 47-
55).
C. PRINCIPLES OF LAW
The Principles of Law identified above with respect to claim 24 are
equally appropriate for claim 25.
D. ANALYSIS
Appellants do not provide a clear definition of the terms “catalyst” or
“co-catalyst” and do not specifically exclude any particular catalytic material
from being either a catalyst or a co-catalyst. (FF 22). Likewise, U.S. Patent
No. 6,015,779 does not provide a clear indication of what constitutes a
“catalyst” or a “co-catalyst.” (FF 2 and 23-24). Thus, the broadest
reasonable interpretation of the claimed “catalyst” and “co-catalyst” are
merely two different catalysts that are use in polyalphaolefin polymerization
reactions. Crish, 393 F.3d at 1256. Matlack teaches the use of two different
catalysts, a procatalyst and a procatalyst activator, each mixed with an alpha
olefin monomer to form a procatalyst/monomer stream and a procatalyst
activator/monomer stream prior to being mixed with the other of the
procatalyst/monomer or procatalyst activator/monomer stream. (FF 18).
Appellants have provided no reasoning why a procatalyst or a procatalyst
activator would not constitute a catalyst or a co-catalyst, as recited in claim
25. Thus, we find that the step of combining a co-catalyst with a monomer
to form a monomer/co-catalyst mixture prior to combining with a catalyst is
expressly found in Matlack with sufficient specificity to anticipate this claim
limitation within the meaning of 35 U.S.C. § 102(b). Crish, 393 F.3d at
1256; Schaumann, 572 F.2d at 317. Thus, Appellants have not demonstrated
that the Examiner reversibly erred in finding, as a matter of fact, that
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Matlack anticipates the claimed “monomer/co-catalyst mixture” recited in
claim 25.
The claimed “catalyst” and “co-catalyst” are not limited to the
preferred catalysts and co-catalysts recited in Appellants’ Specification (FF
25 and 26) or to the descriptions of “preferred polymerization reactants”
recited in the alternative patents identified in Appellants’ Specification. (FF
2). Van Geuns, 988 F.2d at 1184; Phillips, 415 F.3d at 1323. However,
U.S. Patent No. 6,015,779 indicates that preferred catalysts are “transition
metal catalysts” and that preferred co-catalysts include alkylaluminoxane
alone or with another component, such as diethylaluminum chloride or
dibutylaluminum chloride. (FF 23-24). Matlack teaches a preferred
procatalyst activator is a diakylaluminum halide. (FF 27). Diethylaluminum
chloride and dibutylaluminum chloride are dialkylaluminum halides.
Matlack also teaches that a preferred procatalysts are molybdenum halides
and tungsten halides (FF 28), which are transition metal catalysts. Thus,
Matlack and the present invention utilize similar “catalysts” and “co-
catalysts,” providing further support for our finding with respect to claim 24
that the process of Matlack and of the claimed invention are substantially
identical so as to shift the burden to Appellants to show lack of inherent
anticipation. Spada, 911 F.2d at 708; Best, 562 F.2d at 1255; Skoner,
517 F.2d at 950.
III. CLAIMS 26-31
A. ISSUE ON APPEAL
Appellants contend that Matlack is silent as to the particular
parameters of the disclosed reactant streams, and thus can not disclose the
particular fluid parameter differentials recited in claims 26-31, i.e. pressure
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and velocity differentials in which the pressures and velocities are greater in
either the first or second reactant streams. (App. Br. 16-21). The Examiner
contends that the claimed pressure and velocity differentials are inherent
parameters of Matlack based on the material (compositional) differences in
the reactant streams taught by Matlack and that, given the parameter
differential, “the fluid parameter in one stream can only be greater or lower
than the other.” (Ans. 5-6).
Thus, a third issue on appeal arising from the contentions of
Appellants and the Examiner is: have Appellants shown the Examiner
reversibly erred in concluding that the particular fluid parameter differentials
of claims 26-31 would have obvious to one of ordinary skill in the art having
the teachings of Matlack? We answer this question in the negative.
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
29. Appellants’ Specification indicates that pressure and velocity
fluid parameter differentials can be caused by, for example, differences in
diameters of conduits, placement of conduits to take advantage of gravity,
and the application of vacuums or pumps. (Spec. 5, l. 1-6 and 23-29; 6, ll.
14-18).
30. The Examples of Matlack additionally teach reactants injected
into a vessel and mixed well. (col. 21, ll. 8-16; col. 22, ll. 5-10).
31. Matlack teaches “a plurality of reactant streams which are
mixed together to form a reaction mixture. The reaction mixture is formed
into a desired shape before the polymerization of the metathesis
polymerizable olefin.” (col. 2, ll. 56-60).
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C. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
An improvement in the art is obvious if “it is likely the product not of
innovation but of ordinary skill and common sense.” KSR, 127 S. Ct. at
1742; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367-68 (Fed. Cir. 2006)(“Our suggestion test
is in actuality quite flexible and not only permits, but requires, consideration
of common knowledge and common sense.”).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
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In particular, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741. In
considering the question of the obviousness of the claimed invention in view
of the prior art relied upon, we are guided by the basic principle that the
question under 35 U.S.C. § 103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art
at the time the invention was made. See Merck, 874 F.2d at 807; In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not . . .
that the claimed invention must be expressly suggested in any one or all of
the references.”).
That is, the question of obviousness cannot be approached on the basis
that an artisan having ordinary skill would have known only what they read
in the references, because such artisan is presumed to know something about
the art apart from what the references disclose. See In re Jacoby, 309 F.2d
513, 516 (CCPA 1962)(“Those skilled in the radiator art must be presumed
to know something about radiators apart from what the references
disclose.”). After all, in an obviousness assessment, skill is presumed on the
part of the artisan, rather than the lack thereof. In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (“[Appellants’ unpersuasive] argument presumes
stupidity rather than skill.”).
D. ANALYSIS
Claim 26 recites that a fluid parameter in the catalyst stream is greater
than the same fluid parameter in the alpha olefin monomer stream. (See
claim 26). Likewise, claim 29 recites that a fluid parameter in the catalyst
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stream is less than the same fluid parameter in the alpha olefin monomer
stream. (See claim 29). As discussed above, Matlack clearly teaches fluid
parameter differentials in the reactant streams, particularly with respect to
concentration and viscosity. (FF 18-21). Matlack expressly teaches that, in
the case where the fluid parameter is concentration of procatalyst (catalyst),
the concentration is greater in the catalyst stream than in the alpha olefin
monomer stream, i.e., the same feature recited in claim 26. (FF 18).
Matlack also expressly teaches that, in the case where the fluid parameter is
concentration of procatalyst activator (co-catalyst), the concentration is less
in the catalyst stream than in the alpha olefin monomer stream, i.e., the same
feature recited in claim 29. (FF 18).
Further, with respect to the viscosity, since Matlack inherently teaches
that the viscosities of the reactant stream are different (FF 21), Matlack also
inherently teaches that the viscosity in one of the reactant streams is either
greater (as in claim 26) or less than (as in claim 29) the viscosity in the other
reactant stream. Moreover, to make reactant streams with different
viscosities, one of ordinary skill in the art would have either made the
viscosity in the catalyst stream greater or less, based on common knowledge
and common sense of one of ordinary skill in the art. KSR, 127 S. Ct. at
1742; DyStar, 464 F.3d at 1367-68.
Claims 27 and 30 recite that the pressure in the catalyst stream is
greater or less than the pressure in the alpha olefin monomer stream,
respectively. (See claims 27 and 30). Likewise, claims 28 and 31 recite that
the velocity in the catalyst stream is greater or less than the velocity in the
alpha olefin monomer stream, respectively. (See claims 28 and 31).
Although Matlack does not expressly teach the pressure or velocity of the
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reactant streams, an express statement of pressure and velocity is not
necessary if providing such pressure and velocity differentials would have
been suggested to one of ordinary skill in the art by the teachings of
Matlack. KSR, 127 S. Ct. at 1741; Merck, 874 F.2d at 807; Keller, 642 F.2d
at 425. Matlack teaches the mixture of two reactant streams. (FF 15, 18-21,
30, and 31). One of ordinary skill in the art of polymerization systems that
utilize reactant streams would presumably know and have the skill to
routinely change pressure and flow rates of the reactant streams such that the
pressure and velocity within the streams are different in order to control the
polymerization reaction. Jacoby, 309 F.2d at 516; Sovish, 769 F.2d at 743.
For example, one of ordinary skill in the art would have the skill to adjust
pressure and velocity of the reactant streams to vary the concentrations at
which the reaction streams are intermixed. The methods of controlling the
pressure and velocity preferred by Appellants’ Specification, such as the use
of pumps or vacuums, altering conduit diameters or using the role of gravity
(FF 29), would have been well known to those familiar with moving
polymer reactant streams through conduits. Thus, adjusting pressure and
velocity parameters such that the pressure and/or velocity in one reactant
stream, such as the catalyst stream, is greater or less than in the alpha olefin
monomer stream would have been no more than the predictable results of
known methods. KSR, 127 S. Ct. at 1739. As such, the claimed pressure
and velocity parameter differentials would have been obvious to one of
ordinary skill in the art.
Accordingly, Appellants have not shown the Examiner reversibly
erred in concluding that the particular fluid parameter differentials of claims
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26-31 would have obvious to one of ordinary skill in the art having the
teachings of Matlack.
IV. CONCLUSION
For the reasons discussed above, we:
1. sustain the Examiner’s rejection of claims 24-25 under 35 U.S.C.
§ 102(b) as anticipated by Matlack; and
2. sustain the Examiner’s rejection of claims 26-31 under 35 U.S.C.
§ 103(a) as obvious over Matlack.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

cam

ALTON W. PAYNE
5508 GRAND LAKE
HOUSTON, TX 77081

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