Ex Parte Diefenbach et alDownload PDFPatent Trial and Appeal BoardAug 29, 201814396915 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/396,915 10/24/2014 Steven P. Diefenbach 7982 7590 08/31/2018 ALBEMARLE CORPORATION PA TENT DEPARTMENT 451 FLORIDA STREET BATON ROUGE, LA 70801 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. Cl-7949 US 3983 EXAMINER QIAN, YUN ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 08/31/2018 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): Albemarle.IPDocket@albemarle.com Tina.Matz@Albemarle.com Maggie.Martin@Albemarle.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN P. DIEFENBACH, 1 Min Li, Matthew Grant Thom, and Lubin Luo Appeal2017-010890 Application 14/396,915 Technology Center 1700 Before ADRIENE LEPIANE HANLON, BEYERL YA. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Albemarle Corporation ("Diefenbach") timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 2-6, 8, 10, and 11.3 We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under 35 U.S.C. § 134, is the real party in interest, identified as Albemarle Corporation. (Appeal Brief, filed 31 January 2017 ("Br."), 1.) 2 Office Action mailed 14 September 2016 ("Final Rejection"; cited as "FR"). 3 Remaining copending claims 7, 12-14, 16-19, 22, and 31 have been withdrawn from consideration by the Examiner (FR 1, § 5a), and are not before us. Appeal2017-010890 Application 14/396,915 A. Introduction4 OPINION The subject matter on appeal relates to supported activator compositions for metallocene-catalyzed olefin polymerization. (Spec. 1, 11. 11-12.) Methylaluminoxane is said to react with a metallocene to form a metallocene-dialkylaluminum cation, which is described as being the activated olefin polymerization catalyst. (Id. at 11. 23-25.) Silica-supported methylaluminoxanes are said to be preferred for commercial processes, but are said to "activate only a small amount of metallocene, resulting in a relatively low efficiency for such systems." (Id. at 11. 30-32.) The origin of this problem is thought to be that a large excess of methylaluminoxane is required, and/or only a small amount of methylaluminoxane can be supported on standard grades of silica. (Id. at 11. 32-36.) The '915 Specification discloses an activator precursor composition formed by contacting the support material and a linking compound (e.g., diethylzinc, id. at 6, 1. 6; generally, see pages 5-9) to form a "linking-treated support," (id. at 16, 11. 30-31) followed by adding a polyfunctional compound (e.g., 2,2'-diphenol, id. at 12, 1. 7; generally, see pages 9-14) to the linking-treated support. (Id. at 16, 11. 31-32.) The aluminoxane may be added either after the polyfunctional compound has been combined with the linking-treated support (id. at 20, 11. 20-25), or before the polyfunctional 4 Application 14/396,915, Activator compositions, their preparation, and their use in catalysts, filed 24 October 2014 as the national stage under 35 U.S.C. § 371 of PCT/US2013/031537, filed14 March 2013, which claims the benefit of a provisional application filed 27 April 2012. We refer to the "'915 Specification," which we cite as "Spec." 2 Appeal2017-010890 Application 14/396,915 compound has been combined with the linking-treated support (id. at 11. 26- 31 ). In the words of the Specification, "[ t ]he activator precursor compositions formed by the above process are activator precursor compositions of this invention." (Id. at 17, 11. 3--4.) The inventors speculate that these addition sequences allow a significant amount of the polyfunctional compound moieties to bind to the support and at the same time bind to the aluminoxane, ensuring that the polyfunctional group- modified aluminoxane can either bind to the support or co- precipitate with the support to regulate the finished catalyst's particle size distribution, the resulting polyolefin resins' morphology, and to minimize or avoid fouling of the polymerization reactor. (Id. at 20, 1. 32-21, 1. 3.) Claim 2 is representative and reads: A composition comprising an aluminoxane and an activator precursor composition comprising: i) a support material in contact with a linking compound, and ii) a polyfunctional compound which has at least two aromatic groups in which at least two of said aromatic groups each has at least one polar monoprotic group thereon, wherein the linking compound is an organometallic compound, a non-organometallic compound or mixtures thereof, with the proviso that the organometallic compound does not contain aluminum. (Br., Claims App. A-1; some indentation and paragraphing added.) 3 Appeal2017-010890 Application 14/396,915 The Examiner maintains the following ground of rejection 5, 6: Claims 2-6, 8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Hagerty 7 and Schellenberg. 8 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Diefenbach urges the Examiner erred harmfully because Hagerty does not disclose contacting a linking compound ( diethylzinc, identified by the Examiner) with a support; rather, Hagerty discloses contacting the support with an aluminoxane. (Br. 8, 11. 18-20.) Moreover, Diefenbach urges (id. at 11. 21-22, citing Schellenberg at 1230, 2d in that because Schellenberg requires that the hindered phenol be reacted with an aluminum alkyl, adding that teaching to the compositions described by Hagerty would not result in an organometallic compound linking group that does not contain aluminum, as required by the claims. The Examiner does not dispute Diefenbach' s characterization of Hagerty, but responds that the claims do not require the specified order of 5 Examiner's Answer mailed 18 May 2017 ("Ans."). 6 Because this application has an effective filing date before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 7 Robert 0. Hagerty et al., Polymerization process, U.S. Patent No. 7,700,699 B2 (2010). 8 Jurgen Schellenberg, Heat stabilizers as activators in coordination polymerization, 26 Macromol. Rapid Commun. 1299-1303 (2005). 4 Appeal2017-010890 Application 14/396,915 contact, and that limitations will not be read from the Specification into the claims. (Ans. 4, 11. 15-21.) There are several difficulties with the Examiner's findings regarding Hagerty. First, the Examiner does not cite Hagerty with reasonable specificity. Identifying "col. 1, line 10-col. 46, line 60, and claims 1---63" (FR 3, 1. 22) or "col. 16, line 35---col. 25, line 60" (id. at 5, 1. 16) merely identifies, respectively, the entire patent disclosure, and sections C ("Activators and Activation Methods") through F ("Catalyst Slurry and Solution Components"). This is not a situation in which, for example, the disclosure is ( despite its length), so tightly focused that the relevant disclosure can be discerned at a glance, or so thoroughly discussed in the Specification on appeal that more specific reference would be nearly superfluous. The burden is on the USPTO, in the first instance, to demonstrate the evidentiary basis in the record for factual findings on which the legal conclusion of obviousness is based. Cf In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (the examiner must make a "specific comparison of the teachings of that prior art with the claim limitations.") The failure to provide a reasonable indication of where in the record the relevant evidence is to be found is sufficiently egregious in this case as to warrant reversal on this basis alone. Even if we were to find such a disclosure, 9 such a finding would have necessitated any resulting affirmance being designated a new ground of rejection, in order to give Diefenbach a fair and full opportunity to 9 We have not exercised our discretion to undertake a thorough review of Hagerty, as our primary role is review, not examination in the first instance. We have, however, not uncovered any disclosure inconsistent with Diefenbach's characterizations of Hagerty. 5 Appeal2017-010890 Application 14/396,915 respond. In re Leithem, 661 F .3 d 1316, 1319 (Fed. Cir. 2011) ("Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner."). Second, the Examiner has not come forward with any evidence and reasoning indicating why adding compounds taught by Hagerty and Schellenberg would have resulted in a support material in contact with a linking compound that is an organometallic compound that does not contain aluminum. To the extent the Examiner is arguing ( or at least implying) that the sequence of additions of components would not have been expected to make a difference in this regard, the Examiner has not come forward with credible evidence and argument that the teachings of the Specification would have been doubted. While disclosures in the Specification need not be accepted at face value, the words of the predecessor to our reviewing court regarding a perceived lack of enabling disclosure apply equally to the factual bases for rejections over prior art: it is incumbent upon the Patent Office, whenever a rejection on this basis is made, to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement. In re Marzocchi, 439 F.2d 220,224 (CCPA 1971). The Examiner's implied assumption, that the order of combining the reactive ingredients taught by Hagerty and Schellenberg necessarily results in the same or substantially the same product, is not supported, on the present record, by credible evidence and reasoning of record. 6 Appeal2017-010890 Application 14/396,915 Diefenbach argues further that "Schellenberg discloses that the hindered phenol [ 10J must be reacted with an aluminum alkyl." (Br. 8, 11. 21- 22, citing Schellenberg 1230 [sic: 1300], 2d paragraph11; [see also id., 5th paragraph 12].) Thus, Diefenbach urges, the hindered phenol of Schellenberg would first be reacted with an aluminum alkyl, and the hindered phenol itself would not be substituted into the catalyst precursors described by Harvey. (Br. 8, 11. 24--25.) Diefenbach concludes that that reaction product could not serve as a linking compound within the scope of claim 2, due to the requirement of claim 2 that the linking compound, if it is an organometallic compound, does not contain aluminum. (Id. at 11. 22-24.) The Examiner does not respond directly to this argument. Rather, the Examiner finds that the polyfunctional sterically hindered compound P8 is mixed with aluminoxane MAO to obtain the activator used in polymerization by Schellenberg. (Ans. 5, 11. 5-7.) This finding is contradicted by the passages from Schellenberg cited in nn.11 and 12, supra. Moreover, these findings, even if true, would not cure the deficiencies of the findings regarding Hagerty already discussed. We conclude that Diefenbach has demonstrated harmful error in the rejection of record, and we therefore reverse. 1° Compound P8, Schellenberg 1301, Table 1. 11 "sterically hindered phenolic compounds ... used as a component together with an aluminum alkyl". 12 "The reaction products of the sterically hindered phenolic compounds ... and the aluminum alkyls (P-activators) were prepared ... in toluene ... " 7 Appeal2017-010890 Application 14/396,915 C. Order It is ORDERED that the rejection of claims 2-6, 8, 10, and 11 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation