Ex Parte Chamayou et al

Patent Trial and Appeal Board

Jun 8, 2018

12736148 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121736,148 09/15/2010
23117 7590 06/12/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Jean-Louis Chamayou
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4702-192 2334
EXAMINER
ENG, ELIZABETH
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-LOUIS CHAMA YOU,
CLAUDINE VIVIANE LALANNE-MAGNE, and
MELANIE MURON
Appeal2016-004616
Application 12/736,148
Technology Center 1700
Before JEFFREY B. ROBERTSON, ELIZABETH M. ROESEL, and
BRIAND. RANGE, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 8, 10, 11, and 14--16. We have jurisdiction under
35 U.S.C. § 6(b). 2
1 INEOS Sales (UK) Limited is identified as a real party in interest. App.
Br. 3.
2 In our opinion below, we reference the Specification filed September 15,
2010 (Spec.), Final Office Action mailed March 24, 2015 (Final Action), the
Appeal Brief filed August 24, 2015 (App. Br.), the Examiner's Answer
mailed February 1, 2016 (Ans.), and the Reply Brief filed March 30, 2016
(Reply Br.).
Appeal 2016-004616
Application 12/736,148
We REVERSE.
STATEMENT OF THE CASE
Claimed Invention
Appellants claim a process for the copolymerization of ethylene and
an a-olefin comonomer having 7 to 10 carbon atoms in a fluidized bed gas
phase reactor. App. Br. 13 (claim 8). According to the Specification,
Appellants "surprisingly found" that Ziegler-Natta catalysts can be
successfully employed in such a process "provided that a catalyst which
provides a high uptake rate of comonomer is used and/or a suitable activity
promoter is used." Spec. 3:4--8.
Claim 8 is the only independent claim on appeal and is reproduced
below from Appellants' Claims Appendix:
8. A process for the copolymerisation of ethylene and an
a-olefin comonomer having 7 to 10 carbon atoms in a fluidised
bed gas phase reactor in the presence of a Ziegler-Natta
polymerisation catalyst, comprising operating said process in
condensed mode, wherein said a-olefin is maintained in an
amount below that at which substantial condensation in the
reactor occurs and wherein the catalyst has an uptake rate of 1-
octene of at least 700.
App. Br. 13.
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Appeal 2016-004616
Application 12/736,148
Jenkins
Eisinger
Lalanne-Magne
References3
us 4,588,790
us 5,100,979
US 2005/0256356 Al
Rejections
May 13, 1986
Mar. 31, 1992
Nov. 17, 2005
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
1. Claims 8, 10, and 14--16 as unpatentable over Eisinger and Jenkins.
Final Action 3--4.
2. Claim 11 as unpatentable over Eisinger, Jenkins, and Lalanne-
Magne. Id. at 4--5.
ANALYSIS
The Examiner finds that Eisinger teaches a process for the
copolymerization of ethylene and octene and discloses all elements of
claim 8, except for operation in condensed mode. Final Action 3. The
Examiner finds that Jenkins teaches polymerizing in condensed mode and
further finds that it would have been obvious to operate the process of
Eisinger in condensed mode "for the benefit of obtaining a substantial
increase in production rate while reducing capital investment and energy
requirements," as taught by Jenkins. Id. at 3--4.
Regarding the limitation of claim 8 that recites "wherein the catalyst
has an uptake rate of 1-octene of at least 700," the Examiner calculates an
uptake rate of781.25. Id. at 3. The Examiner's calculation is based on
Eisinger's disclosure that the final copolymer contains about 10 to about 25
3 We identify each reference using the first-named inventor only and refer to
"Jenkins, III" as simply "Jenkins."
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Appeal 2016-004616
Application 12/736,148
percent by weight of 1-octene and that the preferred molar ratio of 1-octene
to ethylene is 0.022:1to0.032:1. Id. (citing Eisinger, 4:57, 5:45--46). Id. at
3.
Appellants challenge the Examiner's calculation of uptake rate based
on Eisinger. Appellants argue that the Examiner's selection of values for the
molar ratio and the amount of octene in the final product is based on
"picking, choosing, and combining various disclosures" of Eisinger that are
"not directly related to each other." App. Br. 8. According to Appellants,
the correct approach would have been to calculate a range of uptake rate
based on the highest and lowest molar ratios of octene to ethylene, as
disclosed by Eisinger, and the highest and lowest values for the amount of
octene in the final product, as disclosed by Eisinger. Id. at 9. Using this
approach, Appellants calculate a range of 500 to 625, which is lower than
the 1-octene uptake rate of "at least 700," as recited in claim 8. Id.
We are persuaded that the Examiner errs in finding, as a matter of
fact, that Eisinger discloses an uptake rate of "at least 700," as recited in
claim 8. Final Action 3.
First, Appellants persuade us that the Examiner errs in selecting the
molar ratio of octene to ethylene for use in calculating an uptake rate based
on Eisinger. Eisinger discloses that the final product contains 10 to 25 wt.%
1-octene. Eisinger 4:45. Eisinger discloses "broad" and "preferred" ranges
for the molar ratio of octene to ethylene (C8/C2 molar ratio). Id. at 4:56-57.
The Examiner's calculation is based on the upper end of Eisinger's range of
octene in the final product (25 wt.%) and the upper end of Eisinger's
preferred range ofC8/C2 molar ratio (0.032:1). Final Action 3. We agree
with Appellants, however, that a person of ordinary skill in the art would
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Appeal 2016-004616
Application 12/736,148
have expected that a copolymer having the highest octene content to be
produced using the highest C8/C2 molar ratio. App. Br. 8-9; Reply Br. 2.
Although the Examiner agrees with this general principle (Final Action 3,
"one of ordinary skill in the art would expect a copolymer having the upper
octene content to be produced using the higher Cs/C2 molar ratio"), it was
not correctly applied to the disclosure of Eisinger. The highest C8/C2 molar
ratio is the upper end ofEisinger's broadest range (0.04:1), not the upper end
of the preferred range (0.032:1), as used in the Examiner's calculation. As
Appellants demonstrate, if an uptake rate is calculated based on Eisinger' s
highest octene content and highest C8/C2 molar ratio, the result is 625
(25/0.04), which is lower than the claimed value of "at least 700." App.
Br. 9.
Second, the Examiner's calculation of an uptake rate based on
Eisinger is inconsistent with the Specification's definition of "uptake rate of
1-octene." Whereas the Examiner's calculation is based on polymerization
conditions disclosed in Eisinger, the Specification requires a calculation
based on a set of defined polymerization conditions. Spec. 4:2-18. The
Examiner does not compare Eisinger' s polymerization conditions to
Appellants' defined conditions, nor find that they are similar. As Appellants
note (Reply Br. 3), Eisinger's polymerization conditions differ from
Appellants' defined conditions in at least one respect. According to the
Specification, uptake rate is measured in the absence of an activity promoter.
Spec. 4:14. The values used in the Examiner's calculation, on the other
hand, pertain to a polymerization in the presence of an activity promoter.
Eisinger 4:42, 5:40. The Examiner does not provide technical reasoning
sufficient to justify relying on a calculation based on Eisinger's disclosed
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Appeal 2016-004616
Application 12/736,148
values, which pertain to a polymerization conditions that differ from
Appellants' defined conditions.
We are not persuaded by the alternative position set forth in the
Examiner's Answer. Ans. 6-7. The Examiner asserts that uptake rate is
"another advantage which would flow naturally from following the
suggestion of the prior art." Ans. 6. However, the Specification teaches that
uptake rate is a characteristic of the catalyst itself. Spec. 4:20-21. The
Examiner's position that any suitable Ziegler-Natta catalyst may be used
stems from the second embodiment disclosed in the Specification, which
relies on the presence of an activity promoter (Ans. 6; Spec. 7:28-31 ), and
thus is insufficient to support a finding that the catalysts disclosed in
Eisinger have the claimed uptake rate under the rationales set forth by the
Examiner in the Answer. See Reply Br. 3.
The foregoing deficiencies in the Examiner's findings and conclusions
regarding independent claim 8 are not remedied by the Examiner's findings
or conclusions regarding dependent claims 10 and 14--16 or separately
rejected dependent claim 11.
Accordingly, for all of the foregoing reasons, we do not sustain the
rejection of claims 8, 10, and 14--16 as unpatentable under 35 U.S.C.
§ 103(a) over Eisinger and Jenkins, nor do we sustain the rejection of claim
11 as unpatentable under 35 U.S.C. § 103(a) over Eisinger, Jenkins, and
Lalanne-Magne.
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Application 12/736,148
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is reversed.
REVERSED
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