Ex Parte Standaert et alDownload PDFBoard of Patent Appeals and InterferencesJun 7, 201212305375 (B.P.A.I. Jun. 7, 2012) Copy Citation 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 Copy with citationCopy as parenthetical citation