Ex Parte Ford et al

Board of Patent Appeals and Interferences

Sep 15, 2010

11841666 (B.P.A.I. Sep. 15, 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.
11/841,666 08/20/2007 Randal Ray Ford 070178-160 2367
70471 7590 09/15/2010
PHAN LAW GROUP PLLC
P.O. BOX 748
ALEXANDRIA, VA 22313-0748
EXAMINER
CHEUNG, WILLIAM K
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/15/2010 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 RANDAL RAY FORD
and RICHARD KINGSLEY STUART JR.
______________

Appeal 2010-000629
Application 11/841,666
Technology Center 1700
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 48-59 in the Office Action mailed
November 20, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.

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 2010-000629
Application 11/841,666
§ 41.31(a) (2008).
We reverse the decision of the Primary Examiner.
Claims 48 and 50 illustrate Appellants’ invention of a copolymer of
ethylene and 1-hexene or other olefin, and are representative of the claims
on appeal:
48. A copolymer consisting of ethylene and 1-hexene, wherein
ethylene composes at least 50% by weight of the copolymer, and wherein
the copolymer has a DSC melt transition temperature of 116ºC to 123ºC, a
density of from 0.880 g/cc to 0.930 g/cc, an n-hexane extractable of from 0
to 6 weight percent, and a melt flow ratio of from about 26 to 34.
50. A copolymer of ethylene and an olefin having 3-16 carbon atoms,
wherein ethylene composes at least 99% by weight of the copolymer, and
wherein the copolymer has a melt flow ratio of from 22 to 26.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: claims 48, 49, 51-53, 55-57, and 59 under 35
U.S.C. § 102(e) or, in the alternative, under 35 U.S.C. § 103(a) over
Bamberger (US 6,136,930); 2 and claims 50, 54, and 58 under 35 U.S.C.
§ 103(a) over Bamberger. Br. 3;3 Ans. 4 and 6.
Opinion
I
With respect to the grounds of rejection of claim 48 under § 102(e)
and under § 103(a), the Examiner contends that Bamberger Examples

2 The alternative grounds of rejection under §§ 102(e) and 103(a) require
separate consideration under each statutory provision. See, e.g., In re Spada,
911 F.2d 705, 707-08 n.3 (Fed. Cir. 1990).
3 We considered the Appeal Brief filed December 9, 2008, and the
Examiner’s Answer mailed April 6, 2009. The Examiner did not enter the
Reply Brief filed May 28, 2009, in the Communication mailed October 19,
2009.
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Appeal 2010-000629
Application 11/841,666
110-112 describe “ethylene/1-hexene copolymers comprising more than 50
weight percent of ethylene as claimed.” Ans. 5. The Examiner contends
that Bamberger discloses 1-hexene as a preferred comonomer for ethylene;
an n-hexane extractable of 0.5 to 2.0%; a preferred density of 0.91 to 0.93
g/cm3; and a preferred melt index ratio of about 22 to 45. Ans. 5, citing
Bamberger col. 6, ll. 60-62, col. 7, ll. 41 and 63, col. 12, ll. 36-39. “Since
[Bamberger] clearly disclose[s] monomeric compositions that are
substantially identical [sic] the monomeric compositions of the
ethylene/1-hexene copolymers as claimed, the examiner has a reasonable
basis to believe that the claimed melt transition temperature is inherently
possessed in [Bamberger].” Ans. 5.
Appellants acknowledge that “Bamberger generally discloses
copolymers with density and [melt flow index] ranges that encompass the
claimed ranges,” but contend the Examiner erred in relying on an inherency
position to hold claim 48 anticipated and obvious based only on the
monomeric compositions of ethylene and 1-hexene used to prepare the
copolymers for two reasons. Br. 3-4. First, Appellants argue that ethylene
and 1-hexene comonomers do not necessarily result in a copolymer having
any of the properties specified in claim 48. Br. 4. Appellants point out that
Bamberger Examples 107-109 are copolymers polymerized from ethylene
and 1-hexene compositions, of which only the copolymer of Example 109
has a density falling within a density range disclosed by Bamberger and the
claimed density range, and none of the exemplified copolymers has a melt
flow index in the claimed range of 26-34 as all of the copolymers have a
melt flow index of less than 22. Br. 4. Second, Appellants argue that the
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Appeal 2010-000629
Application 11/841,666
Examiner has not established that the claimed copolymers and those of
Bamberger are “made in substantially the same manner so as to give rise to
the inference that the [melt transition temperature] is likely to be inherent.”
Br. 4.
The Examiner maintains that Bamberger discloses copolymers with
density and melt flow index ranges that encompass the claimed ranges, and
“that compositionally, the composition of claims 48-51 basically covers the
entire spectrum of ethylene/1-hexene copolymers.” Ans. 8. The Examiner
thus argues that Appellants cannot contend “that the claimed ethylene/1-
hexene copolymers are novel.” Ans. 8. The Examiner submits that
Appellants’ position based on Bamberger Examples 107-109 is not
persuasive because Bamberger’s teachings “are not limited to the working
examples, a few data points . . .do not represent the scope of the density
teachings,” and preferred teachings do not limit the scope of a prior art
reference. Ans. 10.
On this record, we agree with Appellants that the Examiner has not
established that Bamberger would have described to one of ordinary skill in
this art a copolymer of ethylene and 1-hexene which is identical or
substantially identical to the claimed copolymer of ethylene and 1-hexene
encompassed by claim 1 in a manner which anticipates or renders obvious
the claimed copolymers of claim 48. Indeed, the Examiner has not
established that Bamberger would have described a copolymer of ethylene
and 1-hexene that meets each and every limitation of claim 48, which claim
indeed does not encompass the entire spectrum of ethylene/1-hexene
copolymers. See, e.g., Spada, 911 F.2d at 708 (anticipation requires that the
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Application 11/841,666
reference describes all elements of the claimed invention sufficiently to
place a person of ordinary skill in the art in possession thereof).
We find, in these respects, that Bamberger would have taught one of
ordinary skill in the art that the properties of the disclosed copolymers
depend on the disclosed catalysts and polymerization methods, and that the
ranges for densities and melt indices are general ranges based on the whole
range of homo- and copolymers prepared from the listed monomers by the
described catalysts and polymerization methods. Bamberger, e.g., col. 3, l.
19 to col. 10, l. 35, and the Examples, e.g., 107-112, and col. 23, l. 33 to col.
24, l. 19. Thus, on this record, in the absence of scientific explanation or
evidence establishing that the catalysts and polymerization processes
disclosed by Bamberger would have reasonably appeared to result in the
same or similar copolymers as claimed in claim 48 obtained by the catalysts
and polymer processes disclosed by Appellants, it does not reasonably
appear that the claimed copolymers of ethylene and 1-hexene encompassed
by claim 48 and the copolymers of ethylene and 1-hexene described by
Bamberger are identical or substantially identical. Cf., e.g., Spada, 911 F.2d
at 708 (“The Board held that the compositions claimed by Spada ‘appear to
be identical’ to those described by Smith. While Spada criticizes the usage
of the word ‘appear,’ we think that it was reasonable for the PTO to infer
that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce
polymers having the identical composition.”).
Accordingly, in the absence of an established case of anticipation and
of obviousness, we reverse the grounds of rejection of claims 48, 49, 51-53,
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Appeal 2010-000629
Application 11/841,666
55-57, and 59 under 35 U.S.C. § 102(e) and under 35 U.S.C. § 103(a).
II
With respect to the ground of rejection of claim 50 under § 103(a),
the Examiner finds that the difference between the copolymers encompassed
by claim 50 and described by Bamberger “is that [Bamberger] do[es] not
specifically indicate a copolymer having at least 99% of ethylene by
weight.” Ans. 6. In this respect, the Examiner finds that the “broad
teachings of Bamberger” would have described “ethylene copolymers
having low comonomer content,” and that one of ordinary skill in the art
would have had a reasonable expectation of success of obtaining “low
density polyethylene with better thermal stability.” Ans. 6-7, citing
Bamberger col. 1, ll. 34-40, and col. 6, ll. 43-62. On this basis, the Examiner
determines that “it would have been obvious to one of ordinary skill in [sic]
the art to apply ‘routine optimization’ to vary the amount of
1-hexane comonomer in [Bamberger] to obtain” a claimed copolymer
encompassed by claim 50. Ans. 7.
We agree with Appellants that the Examiner erred in determining the
claimed copolymers encompassed by claim 50 are obvious over Bamberger
because the reference would not have described a copolymer having at least
99 weight percent of ethylene and the claimed melt flow ratio range. Br. 6.
Appellants contend that Bamberger does not describe the amount of
comonomer incorporated into the copolymer. Br. 6, citing Bamberger col. 6,
ll. 43-62. Appellants argue that Bamberger does not describe a relationship
between the melt flow ratio and the amount of 1-hexene in the copolymer,
and thus one of ordinary skill in the art would not have recognized that the
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Application 11/841,666
concentration of the 1-hexene as a result effective variable with respect to
the melt flow ratio. Br. 6. Appellants further contend that Bamberger would
not have led one of ordinary skill in the art to “optimize” the copolymers
with respect to the melt flow ratio because Bamberger does not equate the
melt flow ratio with thermal stability. Br. 6, citing Bamberger col. 1, ll. 34-
40. Appellants argue that Bamberger described the thermal stability of low
density polyethylenes and linear low density of polyethylenes but not of the
copolymers described therein, and distinguishes the described copolymers
from linear low density of polyethylenes. Br. 6, citing Bamberger col. 1, ll.
34-40, and col. 9, ll. 47-50.
The Examiner has not addressed Appellants’ arguments. Ans. 10-11.
Thus, on this record, the Examiner has not advanced scientific explanation
or evidence establishing that Bamberger would have led one of ordinary skill
in the art to the claimed copolymers encompassed by claim 50.
Accordingly, we reverse the grounds of rejection of claims 50, 54, and
58 under 35 U.S.C. § 102(e) and under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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