Ex Parte Standaert et al

Board of Patent Appeals and Interferences

Jun 7, 2012

12305375 (B.P.A.I. Jun. 7, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/305,375 09/01/2009 Alain Standaert F-1009 4078
25264 7590 06/07/2012
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
ENG, ELIZABETH
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
06/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAIN STANDAERT, JEROME GROMADA,
and DAVID VANDEWIELE
____________

Appeal 2011-006976
Application 12/305,375
Technology Center 1700
____________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006976
Application 12/305,375

2
Alain Standaert, Jerome Gromada, and David Vandewiele, the
Appellants, seek our review under 35 U.S.C. § 134(a) of a final rejection of
claims 7-12.1,2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, but enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
The Examiner rejected the claims as follows:
I. Claims 7 and 12 under 35 U.S.C. § 102(b) as
anticipated by Morini;3
II. Claims 8, 10, and 11 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of
Morini and Huovinen;4 and
III. Claim 9 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Morini, Huovinen,
and Cecchin.5
The Examiner’s rejections are based on the finding that Morini
describes every limitation of claims 7 and 12. Examiner’s Answer mailed
November 24, 2010 (“Ans.”) at 3-5. That finding is incorrect.
It is undisputed that Morini describes, in a working example (Example
40 at column 15, lines 39-52), a catalyst within the scope of the claims. Br.
3; Ans. 3-4. But that portion of Morini’s disclosure relates to the production
of polypropylene, not a propylene copolymer as required by the claims.

1 The Appellants state that the real party in interest is “TOTAL
Petrochemicals Research Feluy” located in Belgium.
2 Appeal Brief filed September 7, 2010 (Br.”); Final Office Action mailed
April 6, 2010.
3 U.S. Patent 6,818,583 B1 issued to Morini, et al. on November 16, 2004.
4 U.S. Patent 6,503,993 B1 issued to Huovinen, et al. on January 7, 2003.
5 U.S. Patent 5,298,561 issued to Cecchin, et al. on March 29, 1994.
Appeal 2011-006976
Application 12/305,375

3
While Morini does mention the copolymerization of propylene and ethylene,
that teaching is part of a considerably broader disclosure in which a
multitude of various catalyst compositions (inclusive of the catalyst
described in Example 40) are said to be useful in the (co)polymerization of
olefins having the formula CH2=CHR in which R is hydrogen or a
hydrocarbyl radical with 1-12 carbon atoms to produce a wide variety of
polymer products. Col. 1, l. 49 to col. 9, l. 20. We therefore agree with the
Appellants that Morini does not “‘sufficiently describe the claimed invention
to have placed the public in possession of it.’” App. Br. 3 (internal citations
omitted). See, e.g., Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1369 (Fed. Cir. 2008) (anticipation requires that the reference must clearly
and unequivocally disclose the claimed invention without any need for
picking, choosing, and combining disclosures not directly related to each
other).
For these reasons, we cannot affirm any of the Examiner’s rejections.

NEW GROUNDS OF REJECTION
We enter the following new grounds of rejection:
I.
Claims 7 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Morini.
Although Morini does not anticipate, a person of ordinary skill in the
art would have been prompted to use the catalyst composition described in
Example 40 in a process for producing propylene copolymers (e.g.,
ethylene-propylene copolymers) in view of Morini’s explicit teachings.
Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
Appeal 2011-006976
Application 12/305,375

4
(“That the ’813 patent discloses a multitude of effective combinations does
not render any particular formulation less obvious.”).
Specifically, Morini states that the catalyst compositions disclosed in
the reference would be useful in the (co)polymerization of various olefins,
including ethylene and propylene. Col. 1, ll. 6-18; col. 8, ll. 39-46. Thus, a
person of ordinary skill in the art would have reasonably expected that
Morini’s catalyst composition, as described in Example 40, would not only
be useful for propylene homopolymerization, but propylene
copolymerization as well. KSR Int’l 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.”).
We find no merit in the Appellants’ unsubstantiated argument that
“donor systems can behave very differently in [propylene]
homopolymerization versus [propylene] copolymerization” and that,
therefore, “a teaching for donors in homopolymerization would not teach,
show or suggest the use of such in copolymerization.” Br. 7. The
Appellants’ argument is flatly contradicted by Morini’s disclosure, which
indicates that the disclosed catalyst compositions are useful for a wide
variety of (co)polymerization processes including propylene
copolymerization. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(mere lawyer’s arguments and conclusory statements, which are unsupported
by factual evidence, are entitled to little probative value).
Under these circumstances, we conclude that a person of ordinary
skill in the art would have found the subject matter of claims 7 and 12
obvious in view of Morini within the meaning of 35 U.S.C. § 103(a).

Appeal 2011-006976
Application 12/305,375

5
II.
Claims 8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Morini and Huovinen.
Having concluded that the subject matter of independent claim 7
would have been obvious in view of Morini, we adopt the Examiner’s
factual findings and conclusions as set forth on pages 4 and 7 of the Answer.
We also add that Morini teaches the production of propylene-ethylene
copolymers by sequential polymerization of propylene and mixtures of
propylene with ethylene, containing up to 30% by weight of ethylene. Col.
8, l. 65 to col. 9, l. 1. Morini even teaches that “it is possible to carry out the
polymerization in gas-phase operating in one or more fluidized or
mechanically agitated bed reactors.” Col. 9, ll. 18-20. Hence, a person of
ordinary skill in the art would have found it obvious to use any of the
disclosed catalyst compositions, including that of Example 40, in the
production of bimodal, heterophasic propylene copolymers using sequential
polymerization in two or more reactors.
The Appellants contend that Morini and Huovinen cannot be
combined because “doing so would destroy the intended function of such.”
Br. 4. In support, the Appellants point out that Huovinen “teaches nucleated
propylene polymers prepared by polymerizing propylene optionally with
comonomers in the presence of a Ziegler-Natta catalyst system primarily
transesterified with a phthalic acid ester and a strongly coordinating external
donor” and that both Morini and Huovinen “are directed towards utilizing
very specific donor compounds within the Ziegler-Natta catalyst
component.” Id. Again, the Appellants’ contention is unpersuasive.
Contrary to the Appellants’ belief, Huovinen’s catalyst composition is not
Appeal 2011-006976
Application 12/305,375

6
limited to the exclusion of Morini’s catalyst composition. See Huovinen at
col, 6, ll. 20-32.

III.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Morini, Huovinen, and Cecchin.
Having concluded that the subject matter of claims 7 and 8 would
have been obvious, we adopt the Examiner’s factual findings and conclusion
as set forth on page 5 of the Answer as our own.

ORDER
The Examiner’s rejections of claims 7-12 are reversed. Claims 7-12
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 . . . .

REVERSED
Appeal 2011-006976
Application 12/305,375

7
37 C.F.R. § 41.50(b)

sld