Ex Parte Gambrel

Patent Trial and Appeal Board

Apr 27, 2017

12670768 (P.T.A.B. Apr. 27, 2017)

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.
12/670,768 01/26/2010 Timothy W. Gambrel 65156A-US-PCT 4770
133320 7590 05/01/2017
The Dow Phemiral Pnmnanv/Dinsimnre Rr Shnhl T T P
EXAMINER
Fifth Third Center
One South Main Street, Suite 1300
EGWIM, KELECHI CHIDI
Dayton, OH 45402 ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
daytonipdocket@dinsmore.com
ffuimpc@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY W. GAMBREL
Appeal 2016-002327
Application 12/670,7681
Technology Center 1700
Before MARKNAGUMO, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s maintained rejection of claims 13 and 15-17 under 35 U.S.C.
§ 102(b) as anticipated by Minami et al. (US 6,562,886 Bl, issued May 13,
2003) (“Minami”).2 We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Appellant identifies Dow Global Technologies LLC as the real party in
interest. Appeal Br. 1.
2 The basis for the rejection is limited to anticipation; the Answer explicitly
states that “[tjhere is no 103 rejection pending.” Examiner’s Answer dated
November 20, 2015 (“Ans.”), 4.
Appeal 2016-002327
Application 12/670,768
THE INVENTION
Appellant’s claimed invention relates to method of producing a
polymeric composition by polymerization of at least one or more a-olefms
in the presence of a solvent via a solution polymerization in a copper free
polymerization system. Spec. Abstract.
Claim 13—the sole independent claim—is representative.
13. A method of improving yellowness index of a polymeric
composition comprising the steps of:
selecting a copper free polymerization system;
polymerizing at least one or more a-olefms in a presence
of a solvent via a solution polymerization reaction in said
copper free polymerization system;
thereby producing a polyolefin polymer;
melt blending a phenolic antioxidant into said polyolefin
polymer wherein said phenolic antioxidant is selected from the
group consisting of octadecyl 3-(3,5-di-tertbutyl-4-
hydroxyphenyl)propionate and 3,5-di-tert-butyl-4-hydroxy
hydrocinnamate; and
thereby producing said polymeric composition, wherein
said polymeric composition is free of copper, and said
polymeric composition has a whiteness index according to
ASTM-D 6290 of equal or greater than [(-0.73 X)+(Wi)] where
X is the number of days of accelerated aging, and Wi is the
initial whiteness index at 0 days of accelerated aging.
Appeal Br. (Claims Appendix) i.
DISCUSSION3
Having considered the Examiner’s rejection in light of Appellant’s
arguments, we are persuaded that the Examiner has failed to meet the
3 We refer to the Specification filed January 26, 2010 (“Spec.”), the Final
Office Action issued January 30, 2015 (“Final Act.”), the Appeal Brief filed
June 29, 2015 (“Appeal Br.”), the Examiner’s Answer issued November 20,
2015, and the Reply Brief filed December 21, 2015 (“Reply Br.”).
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Appeal 2016-002327
Application 12/670,768
Office’s burden to establish that Minami anticipates the claims on appeal
which require a copper free polymerization system operating to provide a
polymeric composition free of copper and having a specified level of
whiteness. Claim 13.
“A prior art reference [only] anticipates a patent claim under 35
U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery,
677 F.3d 1375, 1379 (Fed. Cir. 2012). While “[a] reference may anticipate
inherently if a claim limitation that is not expressly disclosed is necessarily
present, or inherent, in the single anticipating reference . . . [t]he inherent
result must inevitably result from the disclosed steps', [ijnherency . . . may
not be established by probabilities or possibilities.” Montgomery, 677 F.3d
at 1379-80 (internal citations and quotations omitted). As with any ground
of rejection, “the Examiner bears the initial burden ... of presenting a prima
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
The Examiner finds that Minami teaches a process for preparing a
polyolefin composition comprising “polymerizing at least a-olefins in the
presence of a solvent, i.e., via a solution polymerization reaction system . . .
wherein no copper is used, [thereby] producing a polyolefin polymer; and
melt blending/processing [the] polymer with a phenolic antioxidant. . . and
other phosphite antioxidants . . . thereby producing a polyolefin composition
free of copper.” Ans. 2 (citing Minami col. 10,11. 4-7, col. 26,11. 29-32;
Examples 1 (col. 35,11. 33-62), 3 (col. 36,11. 30-59), and 10 (col. 39,11. 1 to
col. 40,1. 8)). The Examiner further determines that “while the product may
require . . . [the recited whiteness index] measurement. . . the product is not
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Appeal 2016-002327
Application 12/670,768
the subject of the claimed invention [and] [t]hus, the recited whiteness index
is not actually a property of the claimed process invention.” Ans. 2-3.
It is not disputed that Minami teaches the use of a solution
polymerization reaction system to obtain a polyolefin composition. See
generally Appeal Br.; Reply Br. Rather, the issue in dispute is whether
Minami’s disclosed process includes “selecting a copper free polymerization
system” and “thereby produces] a polymeric composition . . . free of copper
. . . [that] has a whiteness index” as set forth in claim 13. Appeal Br. 4-6;
Reply Br. 4-5.
Applicant’s Specification describes, in the alternative, that “[t]he
polymeric composition preferably contains less than 0.02 parts of copper per
one million parts of the polymeric composition” and that “the polymeric
composition is copper free.” Spec. 7,11. 9-11. As the enumerated
alternative that contains copper has less than 20 parts per billion, i.e., “less
than 0.02 parts per one million,” the alternative that is copper free has even
less copper, if any, under any meaningful interpretation of the phrase.
The Specification discloses steps and efforts said to be necessary in
order to reach low levels of copper in the final product. Relevant disclosure
for reaching low levels of copper includes “using a catalyst in a copper free
polymerization system” (Spec. 8,1. 11, also 9,1. 5) and that the
“polymerization system may be made fully or partially from a metal or metal
alloy free of any copper” (Spec. 9,11. 5-7). The Specification also teaches
the use of heat exchangers or vapor liquid separator drums that are copper
free. Spec. 9,11. 10-12.
In contrast to the studied avoidance of copper in materials contacting
the reactants, solvents, and products, as set forth in the Specification,
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Appeal 2016-002327
Application 12/670,768
Minami is silent as to the importance of avoiding copper. Ans. 3 (The
Examiner “note[s] that the word ‘copper’ is not present in the cited
reference.”). The Examiner in essence relies on Minami’s use of catalysts
that include transition metals other than copper as meeting the limitation of a
“copper free polymerization system” and disregards that metals are used
elsewhere in the system.4 See, e.g., Ans. 3. As highlighted by Appellant’s
arguments, however polymerization systems such as Minami’s may include
copper. Having failed to sufficiently account for the potential sources of
copper contamination, the Examiner proffers neither a sufficient basis for the
Minami’s disclosed use of its reactor system to produce a polyolefin
polymer nor, with the disclosed blending/processing with other specified
components, to provide a copper free polyolefin composition. Cf. Sundance,
Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008)
(“What a prior art reference discloses or teaches is determined from the
perspective of one of ordinary skill in the art.”); see also Unigene Labs., Inc.
v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (“A person of ordinary
skill at the time of the invention interprets the prior art using common sense
and appropriate perspective.”).
Examiner’s basis for the rejection, thus, falls short of that necessary
for a prima facie case of anticipation. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not. . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
4 The Examiner’s disregard includes failing to establish that one of ordinary
skill in the art, armed with knowledge of the cited prior art, would have
reasonably had any particular concern as to contamination with copper. See
generally Final Act.; Ans.
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Application 12/670,768
basis.”); In re Sporck, 301 F.2d 686, 690 (CCPA 1962); see also Oetiker,
977 F.2d at 1445. Accordingly, we are unable to sustain the Examiner’s
rejection.
CONCLUSION
The Examiner’s rejection of claims 13 and 15-17 is REVERSED.
REVERSED
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