Ex Parte Denifl et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10481313 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER DENIFL and TIMO LEINONEN
____________

Appeal 2009-011062
Application 10/481,313
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-26 and 28-32. We have jurisdiction under 35
U.S.C. § 6.

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.

Appeal 2009-011062
Application 10/481,313

2
We REVERSE.

Appellants claim a process for producing a catalyst component in the
form of particles which comprises preparing a solution of a complex by
reacting a Group 2 metal (e.g., Mg) compound with an electron donor or a
precursor thereof, reacting the complex with a transition metal (e.g., Ti)
compound to produce an emulsion having a dispersed phase comprising
more than 50 mol % of the Group 2 metal in the complex, and obtaining
droplets of the dispersed phase by agitation in the presence of an emulsion
stabilizer and solidifying the droplets to obtain the catalyst component
particles (claim 1).
Representative claim 1 reads as follows:

1. A process for producing an olefin polymerization
catalyst component in the form of particles having a size range
of 5 to 200 µm, comprising:

preparing a solution of a complex of a Group 2 metal and
an electron donor by reacting a compound of said Group 2
metal with said electron donor or a precursor thereof in an
organic liquid reaction medium;

reacting said complex, in solution, with at least one
compound of a transition metal to produce an emulsion having
a dispersed phase comprising more than 50 mol% of the Group
2 metal in said complex;

obtaining droplets of said dispersed phase within an
average size range of 5 to 200 µm by agitation in the presence
of an emulsion stabilizer and solidifying said droplets to
obtain particles; and

recovering, washing and drying said particles to obtain
said catalyst component.
Appeal 2009-011062
Application 10/481,313

3
The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
being unpatentable over Duranel (US Patent 5,212,133, issued May 18,
1993).
The Examiner's exposition of this rejection in its entirety is set forth
below:

Duranel discloses the invention substantially as claimed
(example 1).

Duranel lacks disclosure of adding the transition metal
compound in applicants' order as well as the amount of group 2
metal complex in the dispersed phase of the emulsion.
However, the latter value would have been conventional to
measure, and the former change in order of steps would have
been conventional for the routineer in the art to achieve with
only minimal experimentation. It would have been obvious to
one of ordinary skill in the art to apply that skill to the
disclosure of Duranel with a reasonable expectation of
obtaining a highly-useful method of making an olefin
polymerization catalyst with the expected benefit of the catalyst
affording polyolefins of distinctive structure.

(Ans. 3).
As correctly argued by Appellants, the Examiner's rejection fails to
explain how Duranel teaches or would have suggested the claim 1 steps of
preparing a solution of a complex by reacting a Group 2 metal compound
with an electron donor, reacting the complex with a transition metal
compound to produce an emulsion having the recited dispersed phase, and
obtaining then solidifying droplets of the dispersed phase to obtain the
desired particles (Appeal Br. 8-17; Reply Br. 2-3).
In addition, Appellants present argument and evidence that their
claimed process yields a spherical catalyst which differs from the non-
Appeal 2009-011062
Application 10/481,313

4
spherical catalyst support made by Duranel's process (e.g., see Appeal Br. 8-
10). Appellants further argue that a person of ordinary skill in the art would
not modify Duranel by adding the transition metal at the beginning of the
process as proposed by the Examiner because doing so would not lead to the
non-spherical catalyst support desired by Duranel (e.g., see id. at 16-17).
In the "Response to Argument" section of the Answer, the Examiner
responds to Appellants' arguments by contending that it would have been
obvious to modify Duranel's process so as to make support particles having a
spherical shape rather than the non-spherical shape desired by Duranel (Ans.
para. bridging 3-4). Regarding this contention, the Examiner states:

[T]he emulsion [of Duranel] can be made without the use of the
dioxane to produce the [non-spherical] shape of truncated
cones, as Duranel only teaches that this is used to make the
truncated cones, and Duranel teaches that spherical particle[s]
can be made, and one skilled in the art would appreciate that if
the transition metal was present during the solidification of the
support, then the transition metal would be evenly distributed
throughout the particle.

(id. at 6).

Appellants argue that the Examiner's contention about preparing
spherical particles from Duranel's process is mere speculation unsupported
by evidence (Reply Br. 9) and that the above quoted statements are likewise
speculative (id. at para. bridging 12-13). We agree. The Examiner has
identified no teachings in Duranel that would have suggested modifying
Duranel's process in such a way as to result in a process which satisfies the
requirements of Appellants' claim 1 and which is capable of producing the
catalyst component particles required by claim 1.
Appeal 2009-011062
Application 10/481,313

5
For the above stated reasons, we will not sustain the Examiner's § 103
rejection of the appealed claims as being unpatentable over Duranel.
The decision of the Examiner is reversed.

REVERSED

kmm

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