Ex Parte Coffy et al

Board of Patent Appeals and Interferences

Sep 20, 2010

11329542 (B.P.A.I. Sep. 20, 2010)

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.
11/329,542 01/11/2006 Tim J. Coffy COS-755 DIV 6148
25264 7590 09/20/2010
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
CHOI, LING SIU
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/20/2010 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 TIM J. COFFY and STEVEN D. GRAY
____________________

Appeal 2009-012716
Application 11/329,542
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 41-48. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 11/329,542

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We AFFIRM.
Appellants’ claims are directed to a polymer produced by a process
including contacting one or more olefin monomers in the presence of a
catalyst (Claim 41; Spec. ¶ [0008]). Claim 41 is illustrative:
41. A polymer produced by a process comprising
contacting one or more olefin monomers in the presence of a
catalyst, the catalyst being produced by a process comprising:
Contacting in a hydrocarbon solvent a metal compound of
the formula M(OR)2 where M is a metal from Group IIA of the
Periodic Table and R is a hydrocarbyl having from 1 to 20
carbon atoms, with an alcohol-ether selected from: Ethylene
glycol monoethyl ether; ethylene glycol monopropyl ether;
ethylene glycol monomethyl ether; ethylene glycol
monoisopropyl ether; ethylene glycol mono phenyl ether;
ethylene glycol monobenzyl ether; diethylene glycol monoethyl
ether; and diethylene glycol mono-n- butyl ether; thereby
forming a soluble three- or four-coordinate catalyst precursor;
halogenating or titanating and halogenating the catalyst
precursor at least once; forming a supported catalyst; and then
activating the solid catalyst thereby forming active, supported
catalyst.

In the Final Office Action, from which the appeal is taken, the
Examiner provides a helpful diagram of the claim as follows:
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(Final Office Action mailed Aug. 10, 2007 at 3.)
The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claims 41-48 under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent No. 5,006,499 (Daire).2
2. The rejection of claims 41-46 under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent No. 4,698,323 (Band).
Appellants do not argue any claim apart from the others. We,
therefore, select claim 41 as representative for deciding the issues on appeal.

2 The Examiner lists two rejections over Daire. As the statutory ground
(§ 102(b)) and the evidence (Daire) is the same for both rejections, we list
the rejections as one.
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II. DISCUSSION
The issue for each rejection is: Is there a reasonable basis to believe
that Daire and Band describe a polymer having the structure and properties
required by claim 41?
We answer this question in the affirmative, and adopt the fact finding
and analysis of the Examiner in so doing. We add the following primarily
for emphasis.
Appellants do not dispute that, as found by the Examiner, Daire
describes forming a polymer obtained in the presence of a solid catalyst that
is the product of a magnesium alkoxide (a compound having the claimed
M(OR)2) structure) and ethylene glycol monoethyl ether (one of the claimed
alcohol-ethers), titanating and halogenating the catalyst precursor and
activating the solid catalyst as required by claim 41 (Compare Final Office
Action 3-4 and Ans. 4 with Br. 3-4). Rather, Appellants contend that “the
Examiner has not provided support for the anticipation of forming a
supported catalyst” (Br. 3). According to Appellants, Daire’s catalyst
preparation does not include a solid support (Br. 3, citing Daire, col. 3, ll.
18-26), and, in addition, Daire does not form an intermediate soluble three-
or four-coordinate catalyst precursor as required by the claims (Br. 3-4,
citing Daire, col. 2, ll. 46-60).
The Examiner points out that the patentability of a product does not
depend on its method of production, and Daire discloses ethylene
(co)polymer (Ans. 6, citing Daire, Examples 9, 11, and 12). The Examiner
further responds that it is reasonable to believe that a three- and four
coordinate catalyst precursor meeting the requirements of the claims would
occur during Daire’s catalyst preparation (Ans. 7). The Examiner provides
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evidence and a reasoned analysis supporting the finding that a coordinate
catalyst precursor is formed in Daire and that evidence and reasoning is not
rebutted by Appellants (compare Ans. 7 with Br. 3-4).
There appears to be no dispute that Daire does not disclose forming a
supported catalyst (Ans. 7-8).
Examples 9, 11, and 12 of Daire describe forming polymers and
copolymers by contacting an olefin (ethylene) in the presence of the catalyst
described by Daire (Daire, Ex. 9, 11, and 12).
In order to be patentable, a claimed product must be different from the
product of the prior art. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
Therefore, “[w]here a product-by-process claim is rejected over a prior art
product that appears to be identical, although produced by a different
process, the burden is upon the applicants to come forward with evidence
establishing an unobvious difference between the claimed product and the
prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
Here, the claimed product is a polymer. Claim 41 defines the polymer
in terms of a process of contacting olefin monomer in the presence of a
catalyst. The Examiner has found a reference, Daire, that describes forming
a polymer from such monomers (ethylene) in the presence of a catalyst that
appears to be the same or substantially similar to the catalyst formed by the
process recited in claim 41, although the catalyst is unsupported. There is no
evidence that the lack of a support results in a patentable difference in the
resulting polymer. The Examiner’s finding that the claimed polymer is not
patently distinguished from that of Daire is prima facie reasonable and,
therefore, the burden shifted to Appellants to show that, in fact, the
differences in catalyst processing claimed result in a non-obvious difference
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in the end product polymer. Appellants offer no evidence meeting their
burden.
The evidence as a whole supports the position of the Examiner.
Turning to the rejection over Band, Appellants contend that “the
Examiner has failed to demonstrate that the magnesium alkoxy alkoxide of
Band is a soluble three- or four-coordinate catalyst precursor meeting the
limitations recited in the pending claims.” (Br. 4.) Appellants state that the
formulas disclosed in Band show substituents that would not result in the
claimed coordinate complexes, but they provide no evidence in support of
this statement (Br. 4). The Examiner, on the other hand, illustrates how the
structures result in the claimed coordination (Ans. 7).
We find that the evidence supports the position of the Examiner.
Moreover, even if the intermediate catalyst precursor is not formed in the
catalyst forming process of Band, there is no evidence here that the end
product catalyst is different to the extent that the polymer formed is
patentably distinguished from the polymer formed using the catalyst of
Band.
III. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
IV. DECISION
The decision of the Examiner is affirmed.

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V. 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).

AFFIRMED

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FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON TX 77267-4412