Ex Parte Lai et al

Board of Patent Appeals and Interferences

Jan 21, 2009

11048575 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHIH-YAW LAI,
JOHN R. WILSON,
GEORGE W. KNIGHT,
JAMES C. STEVENS, and
PAK-WING STEVE CHUM
____________

Appeal 2009-0007
Application 11/048,575
Technology Center 1700
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Decided: January 21, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 106-108. Claim
106 is illustrative:

Appeal 2009-0007
Application 11/048,575

106. A fiber comprising an olefin homopolymer, the polymer having:
A. a melt flow ratio, I10/I2, ≥ 5.63,
B. a molecular weight distribution, Mw/Mn, defined by the equation:
Mw/Mn ≤ (I10/I2) – 4.63, and
C. a critical shear stress at onset of gross melt fracture greater than about 4 x
106 dyne/cm2.
The Examiner relies upon the following reference in the rejection of
the appealed claims:
Canich US 5,096,867 Mar. 17, 1992
Appellants' claimed invention is directed to a fiber comprising an
olefin homopolymer. The polymer has the recited properties of melt flow
ratio, molecular weight distribution, and critical shear stress at onset of gross
melt fracture.
Appealed claims 106-108 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Canich.
Appellants do not set forth an argument that is reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together.
We have carefully reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner's
reasoned analysis and application of the prior art, as well as his cogent and
thorough disposition of the arguments raised by Appellants. Accordingly,
we will adopt the Examiner's reasoning as our own in sustaining the
rejection of record, and we add the following for emphasis only.
Appellants have not disputed the Examiner's factual determination
that Canich exemplifies "olefin homopolymers made using catalysts and
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Application 11/048,575

methods which are substantially the same as those used to make the claimed
polymers described in appellants' specification" (Ans. 3, last para.). Nor
have Appellants disputed the Examiner's finding that exemplified
homopolymers of Canich have the claimed molecular weight distribution,
and that the claimed melt flow ratio was conventional in the art for olefin
homopolymers of the type claimed.
The Examiner acknowledges that Canich does not disclose a
measurement for the shear stress of the homopolymers or expressly teach
long chain branching of the homopolymers. However, the Examiner finds
that since "the reference polymers are made by substantially the same
catalysts and methods as those claimed . . . basis exists to conclude that the
reference polymers would inherently have values of these properties within
the broad ranges claimed" (Ans., sentence bridging pages 3-4).
Significantly, Appellants have not challenged the Examiner's rationale that it
is reasonable to conclude that olefin homopolymers disclosed by Canich
inherently possess the claimed characteristics.
Appellants traverse the Examiner's rejection "on the grounds of earlier
invention based on the ruling on an Interference over the Canich patent that
was supported by the same declarations made of record in this case" (Br. 9,
second para.). The filing date of Canich is September 13, 1990, and
Appellants maintain that they have “submitted declarations (Exhibits J-R)
which showed that the subject matter of the parent application that resulted
in U.S. Patent No. 5,272,236 antedated the '867 patent [Canich]" (Br. 9, third
para.). Appellants submit that "[t]he Knight Declaration provides a good
overview of the entire project and also details the analysis of the samples
produced by constrained geometry catalysts (CGC) which led to a
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Appeal 2009-0007
Application 11/048,575

realization that the elements produced by CGC catalysts had significant
differences from commercial polymers available at the time" (Br. 9, last
para.). Appellants cite paragraphs (21) and (22) of the Knight Declaration
for the asserted earlier invention of homopolymers and it is Appellants'
belief that "they have shown earlier invention of the homopolymers as well
as the copolymer" (Br. 10, second para.). Appellants conclude that "Canich
is not available as prior art and a rejection over Canich is believed to be
overcome" (id.).
The fatal flaw in Appellants' argument is that paragraphs (21) and (22)
of the Knight Declaration evidence that the production of homopolymers
was after the filing date of the Canich patent. In relevant part, the Declarant
states in paragraph (21) that "Dr. Stevens sent me a letter dated September
11, 1991 in which he suggested that Mr. Wilson make an ethylene
homopolymer in the continuous solution process in the miniplant using the
ZT catalyst at various process temperatures and that the resulting polymer be
analyzed for long chain branching by C NMR." As set forth by the
Examiner, "[t]he cited disclosure fails to provide evidence of earlier
invention because the earliest date indicated for the making of a
homopolymer is September 11, 1991, which fails to antedate the reference
effective date of September 13, 1990" (Ans. 4, second para.). Also, the
Examiner emphasizes that the appealed claims are directed to a fiber
comprising an olefin homopolymer. Appellants have not identified any
location within the 100+ pages of the nine supporting Declarations which
shows earlier invention of the claimed homopolymer fiber" (id.). The
Examiner goes on to state that "[r]egarding fibers, the Declarations appear to
be devoid of any discussion thereof, and appellants' argument does not
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Application 11/048,575

specifically address the concept of making a homopolymer fiber, or any
other type of fiber" (id.).
Appellants' Brief does not address the thrust of the Examiner's
rejection and the salient points made by the Examiner in support of the
rejection. Nor have Appellants presented a Reply Brief in response to the
Examiner's Answer. Consequently, the reasonable position advanced by the
Examiner stands unrebutted.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(effective
Sept. 13, 2004).
AFFIRMED

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