Ex Parte Busico et al

Patent Trial and Appeal Board

Mar 26, 2013

11665706 (P.T.A.B. Mar. 26, 2013)

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.
11/665,706 10/03/2007 Vincenzo Busico F-936 1700
25264 7590 03/27/2013
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
LU, C CAIXIA
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
03/27/2013 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 VINCENZO BUSICO,
ROBERTA CIPULLO, ROBERTA PELLECCHIA,
and ABBAS RAZAVI
________________

Appeal 2011-005214
Application 11/665,706
Technology Center 1700
________________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board by OWENS, Administrative Patent Judge.
Opinion concurring by NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005214
Application 11/665,706

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 14-16 and 19-23. Claims 1-13, 17, and 18, which are all
of the other pending claims, stand withdrawn from consideration by the
Examiner. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a metallocene catalyst system and a method for
using it to polymerize alpha-olefins. Claim 14 is illustrative:
14. A metallocene catalyst system comprising:
(a) a hafnium-based metallocene catalyst component described by
formula I
R"(CpR4)(FluR'8)Hf Q2 (I)
wherein Cp is a cyclopentadienyl ring; Flu is a fluorenyl ring; each R is the
same or different and is hydrogen or a hydrocarbyl radical containing from 1
to 20 carbon atoms or two carbon atoms are joined together to form a C4-C6
ring; each R' is the same or different and is hydrogen or a hydrocarbyl
radical containing from 1 to 20 carbon atoms; R" is a structural bridge
between two Cp rings; Q is a hydrocarbyl radical having from 1 to 20 carbon
atoms, a hydrocarboxy radical having from 1 to 20 carbon atoms or a
halogen and can be the same or different from each other;
or by the formula II
R"(FluR'm)X Hf Q2 (II)
wherein R", Flu, R' and Q are as previously defined and wherein X is a
hetero atom with one or two lone pair electrons selected from the group 15
or 16, and structural bridge R" is between the fluorenyl group and the
heteroatom; and
(b) an activating agent having a low or no co-ordinating capability
comprising an aluminoxane and a sterically hindered lewis [sic, Lewis] base,
wherein the activating agent comprises a ratio of Lewis base to total
aluminum of from 0.5:1 to 0.9:1.

The Reference
Canich US 5,547,675 Aug. 20, 1996
Appeal 2011-005214
Application 11/665,706

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The Rejections
Claims 14-16 and 19-23 stand rejected as follows: under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention and under 35 U.S.C. § 103 over Canich.
OPINION
We affirm the rejections.
Rejection under 35 U.S.C. § 112, second paragraph
The Appellants do not challenge the rejection under 35 U.S.C. § 112,
second paragraph (Br. 2). We therefore summarily affirm that rejection.
Rejection under 35 U.S.C. § 103
The Appellants argue that “Canich does not teach, show or suggest a
ratio of Lewis base to total aluminum of from 0.5:1 to 0.9:1, as recited in the
pending claims” (Br. 3).
Canich discloses that the molar ratio of modifier, which generally is a
Lewis base or a compound containing one or more Lewis basic
functionalities capable of reacting with a Lewis acid, to transition metal
atom is about 1:1 to about 5,000:1 and that the ratio of aluminum atom to
transition metal atom is about 1:1 to about 20,000:1 (col. 11, ll. 14-16;
col. 12, ll. 3-11). Thus, Canich’s ratios of Lewis base to total aluminum
encompass the Appellants’ 0.5:1 to 0.9:1 range and, therefore, would have
rendered ratios within that range prima facie obvious to one of ordinary skill
in the art. As stated in In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir.
2003):
Appeal 2011-005214
Application 11/665,706

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In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness…
….
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In
fact, when, as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap. [(Citations omitted.)]

The Appellants argue that Canich’s disclosure in Table II of ratios of
Lewis base to aluminum, which are at most about 0.035, is a teaching of a
ratio below the Appellants’ range (Br. 3).
Canich is not limited to its examples. See In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Instead, all disclosures therein must be evaluated for what they would have
fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d
961, 965 (CCPA 1966). As pointed out above, Canich’s range of ratios of
Lewis base to total aluminum which encompasses the Appellants’ range
would have rendered ratios within the Appellants’ range prima facie obvious
to one of ordinary skill in the art.
The Appellants argue that Canich’s Examples 2 and 3 appear to show
that increasing the amount of Lewis base decreases the catalyst activity
(Br. 3).
The Appellants provide no supporting explanation for that argument.
What Canich discloses is that “the addition of the modifier increases catalyst
activity” (col. 4, ll. 12-13).
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Application 11/665,706

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The Appellants argue that “the present application unexpectedly
experiences a significant increase in activity when utilizing HF rather than
the Ti exemplified in Canich” (Br. 3).
Canich’s preferred transition metal is a group IV B metal, i.e., Zr, Hf
or Ti (col. 3, ll. 46-47). The Appellants have not provided evidence that the
use of Hf instead of Ti produces a result which would have been unexpected
by one of ordinary skill in the art. The Appellants’ mere attorney argument
to that effect cannot take the place of evidence. See In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA
1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974).
Accordingly, we are not persuaded of reversible error in the
Examiner’s rejections.
DECISION/ORDER
The rejections of claims 14-16 and 19-23 under 35 U.S.C. § 112,
second paragraph, and under 35 U.S.C. § 103 over Canich are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

cam

Appeal 2011-005214
Application 11/665,706

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NAGUMO, Administrative Patent Judge, concurring.
I concur that the arguments of Appellants fail to establish harmful
error in the rejections maintained by the Examiner.
mn