Wu, Margaret M. et al.Download PDFPatent Trials and Appeals BoardMar 23, 202014270784 - (D) (P.T.A.B. Mar. 23, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 14/270,784 05/06/2014 Margaret M. Wu 2005B095/3 3962 23455 7590 03/23/2020 EXXONMOBIL CHEMICAL COMPANY 5200 BAYWAY DRIVE P.O. BOX 2149 BAYTOWN, TX 77522-2149 EXAMINER HINES, LATOSHA D ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 03/23/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): chem.law.prosecution@exxonmobil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARGARET M. WU, NORMAN YANG, LISA S. BAUGH, JO ANN M. CANICH, STEVEN P. RUCKER, JOHN F. WALZER, JR., GORDON H. LEE, FREDERICK Y. LO, ANDREW JACKSON, MARK P. HAGEMEISTER, SHAKEEL TIRMIZI, PEIJUN JIANG, and CHIA S. CHEE Appeal 2019-001273 Application 14/270,784 Technology Center 1700 Before KAREN M. HASTINGS, SHELDON M. MCGEE, and JANE E. INGLESE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 121–142.1 We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies ExxonMobil Chemical Patents Inc., as the real party in interest. Appeal Br. 3. Appeal 2019-001273 Application 14/270,784 2 CLAIMED SUBJECT MATTER The claims are directed to a process of producing a polyalpha-olefin (PAO) using a feed stream of one or more alpha-olefin monomers, where the feed stream has less than 600ppm of heteroatom containing compounds. Sole independent claim 121, reproduced below with relevant emphasis added, is illustrative of the claimed subject matter: 121. A process to produce a polyalpha-olefin comprising: contacting a feed stream comprising at least one alpha- olefin monomer having 5 to 24 carbon atoms with a metallocene catalyst compound and an activator, and optionally an alkyl- aluminium compound, under polymerization conditions in a reactor wherein the alpha-olefin monomer having 5 to 24 carbon atoms is present at 10 volume % or more (based upon the total volume of the catalyst, monomers, and any diluents or solvents present) in the reactor and where the feed stream comprises less than 600 ppm of heteroatom containing compounds; and obtaining a polyalpha-olefin comprising at least 50 mole% of a C5 to C24 alpha-olefin monomer where the polyalpha-olefin has Kinematic viscosity at 100°C of 5000 cSt or less. STATEMENT OF THE CASE The Examiner rejects claims 121–142 as unpatentable under 35 U.S.C. § 103(a) over Song. The Examiner finds, and Appellant does not dispute, that Song discloses the claimed process of contacting a feed stream of an alpha-olefin monomer having 5 to 24 carbon atoms (e.g., 1–decene) with a metallocene catalyst and an activator as recited in claim 121. Final Act. 3–4. Relevant to this appeal, the Examiner also finds that Song does not disclose that the feed stream comprises heteroatom containing compounds. Id. at 4. Because of this silence, the Examiner finds that Song meets the limitation requiring “less than 600 ppm of heteroatom containing compounds” to be in the feed stream. Id. Appeal 2019-001273 Application 14/270,784 3 Appellant’s sole argument on appeal is that the Examiner has not relied properly on the doctrine of inherency––namely, that the Examiner has not established that Song’s feed stream inherently contains less than 600 ppm heteroatom containing compounds recited in claim 121. Appeal Br. 6– 12. Appellant specifically states that Song does not teach or suggest (i) the purity grade of the reagents used, (ii) impurity-abating pre-treatment other than drying, (iii) the impact of impurities at any concentration, specifically the heteroatom-containing impurities claimed, or (iv) the desirability of a highly productive catalyst system. Id. at 6. In view of this, Appellant also asserts that there is a “high probability” of the presence of heteroatom- containing impurities in Song’s reagents, which should be considered as “typical reagents.” Id. at 9. Appellant refers to extrinsic evidence that sets forth purity grades of two specific alpha-olefin monomers disclosed by Song from one manufacturer, and asserts that this evidence rebuts the Examiner’s inherency finding. Id. at 9–12. OPINION We affirm the rejection for the reasons set forth by the Examiner in the Final Action and the Answer. Final Act. 3–10; Ans. 3–12. We add the following primarily for emphasis. Our reviewing court has “recognized that inherency may supply a missing claim limitation in an obviousness analysis.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). “[T]o rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis[,] the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Id. at 1195–96. Furthermore, to properly rely on the doctrine of Appeal 2019-001273 Application 14/270,784 4 inherency, “the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Once the Examiner so provides, the burden then shifts to the patent applicant to demonstrate otherwise. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Applying these concepts to the instant case, the Examiner finds that because Song does not disclose the presence of heteroatom containing compounds in the feed stream, Song discloses the limitation requiring less than 600 ppm of such compounds in its feed stream, i.e. “less than 600 ppm encompasses zero.” Final Act. 4. To support this finding, the Examiner relies on Song’s disclosure of various specific alpha-olefin monomers in paragraph 27, as well as Song’s Example 8 which uses 1-decene as the monomer in its process, and Song’s silence regarding heteroatom containing compounds. Id. at 3–4. Notably, Appellant does not specifically dispute the Examiner’s finding that these passages are silent regarding the presence of heteroatom-containing compounds in Song’s “feed stream.” See Appeal Br., generally. Even further, the Examiner finds, and Appellant does not dispute, that heteroatom containing compounds are not the only type of impurity that may be found in a feed stream of alpha-olefin monomer. Ans. 10. We determine that the Examiner’s uncontested findings that 1) heteroatom-containing compounds are only one possible type of impurity that may be present in a feed stream of alpha-olefin monomer, and 2) Song is silent regarding the presence of heteroatom-containing compounds in its alpha-olefin monomer, amply supply the requisite “basis in fact” that “reasonably support[s] the determination that the allegedly inherent Appeal 2019-001273 Application 14/270,784 5 characteristic necessarily flows from the teachings of the applied prior art.” Ex Parte Levy, 17 USPQ2d at 1464. Under these circumstances, the Examiner has properly shifted the burden of proof to Appellant to demonstrate that Song’s feed stream does not meet the claimed requirement of “less than 600 ppm of heteroatom containing compounds.” In re Best, 562 F.2d at 1255. Although Appellant provides some evidence and related argument regarding two of the fifteen alpha-olefin monomers specifically disclosed by Song, such evidence is insufficient to meet its burden. Appeal Br. 9–12; Song ¶ 27. Specifically, Appellant discusses 1-decene and 1-tetradecene monomers, which are sourced from only one supplier, but does not address the other thirteen alpha-olefin monomers specifically disclosed by Song. Appeal Br. 9–12. Appellant’s limited discussion of 1-decene and 1- tetradecene, however, does not evince that heteroatom containing compounds would be present in amounts greater than 600 ppm for these monomers, much less for all those disclosed by Song. Rather, Appellant merely supplies speculative theories to support its argument. See, e.g., id. at 9 (“for both commercially available 1-decene and 1-tetradecene, substantial quantities of impurities can exist,” and “[e]ven in the grades having the highest purity (analytical standard), total impurities can very well exceed 1000 ppm.”), (emphasis added)); id. at 10 (“the impurities contained in typical 1-decene and 1-tetradecene are prone to containing hetero-atoms such as oxygen” (emphasis added)); id. (“there is a high likelihood of the presence of oxygen-containing compounds at significant concentrations because of the high probability of exposure to air” (emphasis added)); id. (“one having ordinary skill in the art [would] have ample reason to suspect Appeal 2019-001273 Application 14/270,784 6 that the 1-decene and 1-tetradecene monomers used in the examples of Song contained hetero-atoms such as oxygen, nitrogen, sulfur and the like, and the total concentrations of them can exceed the recited 600 ppm limit” (emphasis added)); id. at 11 (“such extraordinarily low productivity of the catalyst taught in Song could very well be due to high concentrations of the hetero-atom-containing impurities present in the alpha-olefin monomer and/or the toluene solvent used.” (emphasis added)); id. at 12 (“one skilled in the art has strong reason to suspect that the reaction mixtures in the examples of Song contained catalyst poisons at very high concentrations, likely exceeding the limit recited” (emphasis added)). Such speculation amounts to no more than unpersuasive attorney argument. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis/Reference Affirmed Reversed 121–142 103(a) Song 121–142 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation