Ex Parte Migone et al

Board of Patent Appeals and Interferences

Apr 20, 2010

11090523 (B.P.A.I. Apr. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RUBEN A. MIGONE and SEHYUN KIM
____________________

Appeal 2009-013822
Application 11/090,523
U.S. Patent Publication 2006/0217502
Technology Center 1700
____________________

Decided: April 20, 2010
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
ROMULO H. DELMENDO and SALLY C. MEDLEY, Administrative
Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL
A. Statement of the case 1
Sunoco, Inc. (R&M) [hereinafter Sunoco], the real party in interest, 2
seeks review under 35 U.S.C. § 134(a) of a rejection (mailed 22 October 3
2008). 4
The application was filed on 25 March 2005. 5
Claims 1-15 are on appeal. 6
The following prior art has been cited by the Examiner: 7

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Sumitomo U.S. Patent 5,985,973 16 Nov. 1999
Miro U.S. 6,686,433 B1 3 Feb. 2004

Bodiford
U.S. Patent Publication
2005/0027080 A1
Published 3 Feb. 2005
based on an application
filed 9 Oct. 2002
1
Sumitomo and Miro are prior art under 35 U.S.C. § 102(b). 2
Bodiford is prior art under 35 U.S.C. § 102(a) and 35 U.S.C. 3
§ 102(e)(1). Sunoco has not attempted to antedate Bodiford. 4
We cite the following additional prior art. 5
Koura U.S. Patent 5,473,021 5 Dec. 1995
Oskam U.S. Patent 5,912,202 15 June 1999

Chosa

U.S. Patent 6,984,600
10 Jan. 2006
based on an application
filed 21 July 2004

Bigiavi

U.S. Patent 7,160,964
9 Jan. 2007 based on an
application filed 20
Dec. 2004, claiming
benefit of PCT
application
PCT/EP03/06348,
published as
WO2004/000895 on 31
Dec. 2003

Yoshikiyo

U.S. Patent 7,238,758
3 July 2007 based on an
application filed 12 Apr.
2005, claiming benefit
of PCT application
PCT/JP03/10446,
published as
WO2004/016662 on
26 Feb. 2004

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Koura and Oskam are prior art under 35 U.S.C. § 102(b). 1
Chosa is prior art under 35 U.S.C. § 102(e). 2
Bigiavi is prior art under 35 U.S.C. § 102(e). However, 3
corresponding PCT publication WO2004/000895 is prior art vis-à-vis 4
Sunoco under 35 U.S.C. § 102(b). For convenience, we refer to the Bigiavi 5
patent. 6
Yoshikiyo is not prior art vis-à-vis Sunoco. However, corresponding 7
PCT publication WO2004/016662 is prior art vis-à-vis Sunoco under 8
35 U.S.C. § 102(b). For convenience, we refer to the U.S. Patent to 9
Yoshikiyo since WO2004/016662 is written in Japanese. 10
We have jurisdiction under 35 U.S.C. § 134(a). 11
B. Findings of fact 12
The following findings of fact are supported by a preponderance of 13
the evidence. 14
Additional findings appear in the Discussion portion of the opinion. 15
Field of the invention 16
The Sunoco invention relates to a process for producing copolymers 17
of propylene. Specification, ¶ 0001. 18
Background of the invention 19
Polypropylene in general is produced in a process using multiple 20
reactors, including liquid phase and gas phase reactors. Polypropylene 21
impact copolymers are produced in a two-stage process. Specification, 22
¶ 0002. 23
Sunoco acknowledges that polypropylene copolymers in general are 24
produced in multiple reactors. In the case of an impact copolymer, a 25

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homopolymer is produced in the first stage polymerization, followed by 1
additional polymerization of ethylene and propylene or other α-olefin-2
propylene copolymer in the second stage polymerization. Other α-olefins 3
that may be used instead of ethylene in the second stage include C4 and 4
higher α-olefins, preferably C4, C6 or C8 α-olefins. The first stage in which 5
the propylene homopolymer is formed comprises at least one gas phase or 6
liquid phase polymerization reactor. The polymerization product from this 7
first stage is then passed to a second stage comprising at least one gas phase 8
or liquid phase polymerization reactor wherein additional olefin is added and 9
a copolymer is formed in the presence of the polymerization product from 10
the first stage. According to Sunoco, the second stage copolymerization is 11
generally accomplished without the addition of additional catalyst. 12
Specification, ¶¶ 0005 and 0006. 13
As will become apparent, there are exceptions to how the second stage 14
copolymerization is generally accomplished. Koura and Yoshikiyo both 15
show addition of external donor in a second phase of the polymerization. 16
Description of the invention 17
The Sunoco invention is a process for producing propylene 18
copolymers. The process comprises polymerizing propylene in the presence 19
of a Ziegler-Natta catalyst in a first stage comprising at least one gas phase 20
or liquid phase reactor, wherein a first amount of an external donor is added 21
to the first stage. The polymerization product from the first stage is passed 22
to a second stage comprising at least one gas phase or liquid phase reactor, 23
wherein propylene, and ethylene or other α-olefin, are polymerized in the 24
presence of the first stage polymerization product. A second amount of an 25

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external donor is added to the second stage. Optionally, an antistatic 1
inhibitor is also added to the second stage. Specification, ¶ 0004. 2
What the invention involves is making what is known as block 3
copolymer. The block copolymer has the general configuration: 4
AAAAAABBBBBB 5
wherein in this case A is propylene and AAAAAA is polypropylene and 6
BBBBBB is a copolymer of additional propylene and ethylene (or in the 7
case of Claim 15, a copolymer of additional propylene and an α-olefin 8
having four or more carbon atoms, i.e., 1-butene). 9
The invention uses what is known as a Ziegler-Natta catalyst. 10
Specification, ¶ 0006. 11
The Sunoco invention contemplates adding additional external donor 12
to the second stage copolymerization. Specification, ¶ 0007. 13
The external donor added to the second stage may be the same as or 14
different from the external donor added to the first stage. Exemplary 15
external donors include di-alkylaminotrialkoxysilanes, particularly 16
diethylaminotriethoxysilane. Specification, ¶ 0007. 17
The external donor may be added to the second stage polymerization 18
in any manner provided the polymer powders are wet with the external 19
donor. Exemplary methods for injecting the external donor include, e.g., 20
adding through a monomer feed stream to the polymerization, spraying into 21
the incoming powder, or adding through any reactor port. Specification, 22
¶ 0007. 23

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Addition of additional external donor to the second-stage 1
copolymerization is said to (1) increase the amounts of bi-polymer formed 2
and (2) modify the characteristics of copolymer. Specification, ¶ 0009. 3
Addition of external donor to the copolymerization of ethylene and 4
propylene increases molecular weight of ethylene/propylene copolymer and 5
promotes ethylene incorporation in the copolymer. Specification, ¶ 0009. 6
The specification contains data which would appear to be the result of 7
actual experimentation. Several samples of propylene impact copolymers 8
are said to have been produced according to the current invention. 9
Specification, ¶ 0010. 10
The impact copolymers are said to have been produced by first 11
polymerizing propylene in a first stage liquid phase polymerization under 12
standard conditions. For the copolymerization of propylene and ethylene in 13
the second stage gas phase polymerization, external donor was injected in 14
amounts about 10 or 20% of the amount added in the first stage. The 15
external donor was injected to the second stage gas phase reactor through the 16
monomer feed stream of ethylene. The donor used in this case was 17
diethylaminotriethoxysilane. Specification, ¶ 0012. 18
To assess the effect of addition antistatic inhibitor, small amounts of 19
Atmer® 163 (an ethoxylated amine available from CIBA) were also injected 20
with the external donor in one sample. The inventors believe that the 21
antistatic agent may inhibit catalyst activity and thereby modify the 22
properties of the copolymers produced in the second stage polymerization. 23
Specification, ¶ 0012. 24

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The polymers said to have been produced with and without additional 1
external donor and Atmer® 163 are set out in Table 1, which is reproduced 2
below. Specification, ¶ 0012. 3
4
As depicted above, Table 1 lists parameters used for impact copolymers 5
produced with and without additional external donor and antistatic inhibitor. 6

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The data is based on an experiment said to have involved two stages. 1
According to the specification, propylene was produced "in a first stage 2
liquid phase polymerization under standard conditions." Specification, 3
¶ 0012 (italics added). The "standard conditions" are not described. The 4
prior art of record makes it absolutely clear that properties are based on 5
polymerization conditions. One skilled in the art could not reproduce the 6
experiments because Sunoco fails to describe the "standard conditions." 7
Also not described are the process conditions of the second stage gas phase 8
polymerization. We decline to give any weight to experimental data based 9
on experiments which cannot be duplicated. 10
Also absent from the description are (1) the nature of any expected 11
experimental error and (2) whether results are based on a single experiment 12
or an average based on several experiments. 13
According to Sunoco, various polymer characteristics are said to be 14
affected by whatever process conditions were used in the first and second 15
stages. Specification, ¶¶ 0014 through 0019. The claims on appeal are not 16
limited to a process for making polymers having the characteristics set out in 17
Table 1. The experimental data is not commensurate in scope with the 18
breadth of the claims. 19
For these reasons we decline to give any weight to the experimental 20
comparison data. 21
Claims on appeal 22
Independent Claim 1, which we reproduce from the Claim Appendix 23
of the Appeal Brief, reads [bracketed matter added and some indentation 24
changed]: 25

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A process for promoting ethylene incorporation into an 1
ethylene/propylene copolymer and increasing the molecular 2
weight of said copolymer, the process comprising: 3
[1] in a first stage comprising at least one polymerization 4
reactor, polymerizing propylene in the presence of a Ziegler-5
Natta catalyst to produce a propylene homopolymer, wherein a 6
first amount of an external donor is added to the first stage, 7
[2] passing said propylene homopolymer from the first 8
stage to a second stage comprising at least one polymerization 9
reactor; and 10
[3] polymerizing propylene and ethylene in said second 11
stage, in the presence of said propylene homopolymer, wherein 12
the second amount of an external donor is added to the second 13
stage. 14
Other claims are considered in the Discussion portion of this opinion. 15
Examiner's rejections 16
The Examiner maintained the following rejections in the Examiner's 17
Answer. 18
Claims 1, 4-6, 8-9, and 15 are rejected under 35 U.S.C. § 102(e) as 19
being anticipated by Bodiford. 20
Claims 1, 2, 4-6, 9-12, 14, and 15 are rejected under 35 U.S.C. 21
§ 103(a) as being unpatentable over Miro. 22
Claims 1-6 and 9-15 are rejected under 35 U.S.C. § 103(a) as being 23
unpatentable over Miro and Sumitomo. 24

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Claims 1-6, 8-9, and 11-15 are rejected under 35 U.S.C. § 103(a) as 1
being unpatentable over Bodiford and Sumitomo. 2
Claim 7 was not rejected over the prior art. 3
A rejection based on double patenting over U.S. Patent 7,217,772 was 4
withdrawn. Examiner's Answer, page 3 5
Prior art 6
(1) Bodiford 7
Bodiford describes a four-stage process for making a polymer having 8
a polypropylene portion and an ethylene/propylene portion. 9
Fig. 1 of Bodiford is reproduced below. 10
11
Depicted is a schematic representation of a 4-stage reactor 12

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Propylene 17, hydrogen 15 and catalyst, cocatalyst and external donor 1
13 are fed into 1st Reactor 2. ¶¶ 0021 and 0027. 2
Additional propylene 31 and the product of the 1st Reactor 2 are feed 3
into 2nd Reactor 4. ¶ 0028. 4
Still additional propylene 33 and the product of the 2nd Reactor are 5
feed into 3rd Reactor 6. ¶ 0029. 6
The result of the polymerization in the three reactors is a 7
polypropylene homopolymer, i.e., a polymer made only from propylene. 8
The three stages in Bodiford's 1st, 2nd and 3rd Reactors correspond to 9
Sunoco's claimed first stage involving "at least one polymerization reactor." 10
Ethylene 29 and propylene 27, hydrogen 43 and the product from the 11
3rd Reactor 6 are fed into 4th Reactor (Copolymer Reactor) 8. ¶¶ 0023 and 12
0031. 13
The single fourth stage of Bodiford corresponds to Sunoco's claimed 14
second stage. 15
The catalyst injected into the first Reactor is a Ziegler-Natta catalyst 16
in combination with an external donor. The external donor can be a silicon 17
compound, such as methylcyclohexyldimethoxysilane (which is the same 18
compound as cyclohexylmethyldimethoxysilane) and 19
diisopropyldimethoxysilane, both mentioned in Sunoco Claim 6. ¶ 0039. 20
In effect, the Examiner found that Bodiford describes injection of 21
additional external donor into the 4th Reactor. It is true that external donor 22
injected into the 1st Reactor ends up in the 4th Reactor (via the 2nd and 3rd 23
Reactors). But, there is no explicit teaching in Bodiford of injection of 24
additional donor into the 4th Reactor. As noted by the Examiner, Bodiford 25

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states that "[i]n the copolymer reactor [the 4th Reactor] 8 there are 1
polymer/catalyst powder, gaseous propylene, gaseous ethylene, and 2
hydrogen." Examiner's Answer, page 7. However, catalyst powder being 3
present does not establish that "a second amount of an external donor" is 4
added to the 4th Reactor. Accordingly, to the extent the Examiner found 5
that a second amount of external donor is injected into the 4th Bodiford 6
Reactor, the Examiner's finding is not supported by substantial evidence. 7
(2) Miro 8
Miro, like Bodiford, describes a process for making a copolymer of 9
propylene and ethylene using Ziegler-Natta catalysts and external donors. 10
Col. 5:9-22. 11
One external donor described is tetraethoxysilane (TEOS), a donor 12
mentioned in Sunoco Claim 6. Col. 5:64. 13
A two-stage process for making a polypropylene—propylene/ethylene 14
block impact copolymer is described using the external donors. Propylene is 15
first polymerized in two stages in presence of TEOS in the first stage and 16
dicyclopentyldimethoxysilane (DCPMS) in a second stage. Col. 10:45-52. 17
The first two Miro stages correspond to Sunoco's claimed first stage. 18
Thereafter, the product of the first two stages is transferred to a third 19
gas phase reactor where ethylene and propylene are injected resulting in a 20
polypropylene and ethylene/propylene block copolymer. Col. 10:64 through 21
col. 11:14. See also Example 3 at col. 12:30-46. 22
The third Miro stage corresponds to Sunoco's claimed second stage. 23
There is no indication in Miro of addition of additional external donor 24
in the third stage where ethylene and propylene are copolymerized. 25

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(3) Sumitomo 1
Sumitomo describes preparation of a copolymer comprising a 2
polypropylene based resin portion and an ethylene/propylene copolymer 3
portion. Col. 3:1-7; col. 16:15 through col. 17:25. 4
Ziegler-Natta catalysts and external donors are used during 5
polymerization. Sumitomo identifies the external donor as an "electron 6
donor." Col. 7:28-36. 7
Suitable external donors include cyclohexylmethyldimethoxysilane, 8
dicyclopentyldimethoxysilane, diisopropyldimethoxysilane and 9
tetraethoxysilane, all mentioned in Sunoco Claim 6. Col. 10:40-47. 10
Sumitomo describes addition of an antioxidant in the 11
ethylene/propylene polymerization stage. Col. 17:9-19. See also col. 15:36. 12
(4) Koura 13
Koura describes a process for producing a polypropylene/ethylene-14
propylene block copolymer of the AAAAAABBBBBB type set out above 15
which comprises: 16
(1) a first step of reacting propylene or a mixture of propylene 17
and ethylene in the presence of a catalyst composed essentially 18
of 19
(A) a solid catalyst component containing 20
magnesium, titanium, and a halogen as the indispensable 21
ingredients, 22
(B) an organoaluminum compound, and 23
(C) a silicon compound 24

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to form a propylene homopolymer portion or an 1
ethylene-propylene copolymer portion having an 2
ethylene content of 3% by weight or less, in an amount 3
corresponding to 50-95% by weight of the total block 4
copolymer amount, and 5
(2) a second step of reacting a mixture of ethylene and 6
propylene with the polymer portion obtained in the first step 7
(i.e., an AAAAAA polypropylene homopolymer) in the 8
presence of the aforesaid catalyst composed essentially of the 9
components (a), (b), and (c) and in the additional presence of a 10
silicon compound to obtain an ethylene-propylene block 11
copolymer which contains an ethylene-propylene copolymer 12
portion having an ethylene content of at least 20% by weight in 13
an amount corresponding to 5-50% by weight of the total block 14
copolymer amount. 15
Col. 1:65 through col. 2:29. 16
The reaction in the first step (stage) may also be conducted in two or 17
more stages. Col. 4:42-47. 18
Suitable silicon compounds include cyclohexylisopropyldimethoxy-19
silane (col. 3:50 (formula on left)), an external donor mentioned in Sunoco 20
Claim 6. 21
Gas phase and slurry polymerization can be used. Col. 5:40-44. 22
Example 1 (col. 7) describes the use of three gas phase polymerization 23
vessels: X, Y, and Z. Homopolymerization of propylene is described as 24
taking place in vessels X and Y. The two-stage X and Y polymerization 25

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corresponds to Sunoco's first step—which can involve multiple reactors. 1
External donor cyclohexylethyldimethoxysilane (CHEDMS) is introduced 2
into vessel X. The homopolymer polypropylene made in vessels X and Y is 3
transferred to vessel Z. Propylene and ethylene are introduced into vessel Z 4
along with tetraethoxysilane (TES). The product is a polypropylene and an 5
ethylene/propylene block copolymer. 6
(5) Chosa 7
Chosa reveals that the external donor of Sunoco Claim 7 is known as 8
an external donor useful during Ziegler-Natta catalyzed gas or liquid phase 9
polymerization of olefins, including ethylene and propylene. Col. 10:37 10
(diethylaminotriethoxysilane); col. 11:28-30; col. 12:26-27. 11
(6) Oskam 12
Oskam reveals that ATMER® 163 is a known antistatic agent used in 13
the polymerization of olefins. Col. 15:25-27. 14
(7) Bigiavi 15
Bigiavi describes the use of ATMER® 163 as a deactivator for 16
Ziegler-Natta catalysts during polymerization of an olefin (col. 14—Claim 17
1), "especially" the C4 olefin 1-butene. Col. 1:14-19; col. 12:39-44. 18
Bigiavi Fig. 1 and Fig. 2 are reproduced below. 19

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1
Depicted in figure 1 is a schematic diagram of a process for polymerizing 2
olefins. 3

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1
Depicted in figure 2 is a schematic diagram of a deactivation apparatus to 2
deactivate catalyst residues. 3
4
With reference to Fig. 1, an olefin is polymerized in Reactor 30 and 5
then in Reactor 60. From there the product is passed to deactivation 6
apparatus 90 where deactivator 22 is added. Col. 7:26-41. 7
Fig. 2 shows some details of the deactivator. Polymeric solution 4 8
from Reactor 60 (Fig. 1) and deactivator 5 are fed into the deactivator. 9
Deactivated polymer 6 is withdrawn at the bottom of the deactivator. 10
Col. 7:62 through col. 8:3. 11

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(8) Yoshikiyo 1
In Example 1, Yoshikiyo describes making diethylaminotriethoxy-2
silane. Col. 39:33 through col. 40:2. Diethylaminotriethoxysilane is the 3
external donor of Sunoco Claim 7. 4
In Experimental Example 9, Yoshikiyo describes block 5
copolymerization of ethylene/propylene on to a base polypropylene 6
homopolymer. The catalyst used to make the base polypropylene is a 7
Ziegler-Natta catalyst in combination with an external donor—the silane of 8
Example 1. Col. 58:1-3. Following forming the polypropylene 9
homopolymer, a second polymerization occurs in which ethylene and 10
propylene are added, the result being a powdery block copolymer. 11
Col. 58:46-62. While Example 9 does not explicitly describe injection of 12
additional external donor into the second polymerization phase, Yoshikiyo 13
reveals that (col. 29:66 through col. 30:4): 14
After prepolymerization in the presence of the catalyst 15
consisting of the solid catalyst constituent [A], the 16
organoaluminum compound constituent [B] and the 17
organosilicon compound constituent [D], subsequent 18
polymerization or copolymerization of an α-olefin may be 19
performed with addition of the organosilicon compound 20
constituent [C]. 21
Yoshikiyo confirms that [C] may be added during the addition of 22
ethylene and propylene in the block copolymerization phase. 23
[A] and [B] make up a Ziegler-Natta catalyst. 24

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[C] is the external donor of Formula 14 (col. 4:21-57), which includes 1
diethylaminotriethoxysilane. 2
[D] is silicon compound. Col. 10:46-58. 3
Yoshikiyo teaches that the polymerization includes a first and second 4
step. The first step involves homopolymerizing propylene. The second step 5
involves adding propylene and another olefin. The first and second steps 6
may include multi-stage polymerization. Col. 31:25-30. 7
C. Discussion 8
Examiner's rejection based on Bodiford 9
The Examiner's § 102(e) rejection based on Bodiford and the 10
Examiner's § 103(a) rejection based on Bodiford and Sumitomo are 11
reversed. Bodiford does not describe injection of additional external donor 12
into the second stage of polymerization where the block copolymer is 13
formed. 14
Examiner's rejection based on Miro 15
The Examiner's § 103(a) rejections based on Miro and Miro combined 16
with Sumitomo are reversed. Miro, like Bodiford, does not describe 17
injection of additional external donor into the second stage of 18
polymerization where a block copolymer is made. 19
New grounds of rejection 20
(1) Claim 1 21
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by Koura. 22
Using the technique set out in Ex parte Braeken, 54 USPQ2d 1110 (BPAI 23
1999), we find anticipation as follows: 24

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A process for promoting ethylene incorporation into an 1
ethylene/propylene copolymer and increasing the molecular 2
weight {addition of ethylene and propylene to 3
polypropylene homopolymer herein identified increases the 4
molecular weight of the polypropylene homopolymer upon 5
formation of a block copolymer having a polypropylene 6
segment and an ethylene/propylene segment} of said 7
copolymer, the process comprising: 8
[1] in a first stage comprising at least one polymerization 9
reactor {Koura, col. 7:45-46; vessels X and Y}, polymerizing 10
propylene in the presence of a Ziegler-Natta catalyst 11
{col. 7:33-36; col. 2:52 to col. 3:38}; to produce a propylene 12
homopolymer {col. 7:45}, wherein a first amount of an external 13
donor is added to the first stage {col. 7:35-36—CHEDMS}, 14
[2] passing said propylene homopolymer from the first 15
stage {vessels X and Y} to a second stage comprising at least 16
one polymerization reactor {col. 7:58—vessel Z}; and 17
[3] polymerizing propylene {col. 7:58-59} and ethylene 18
{col. 7:58-59} in said second stage {vessel Z}, in the presence 19
of said propylene homopolymer wherein the second amount of 20
an external donor {col. 7:63-65—TES} is added to the second 21
stage {vessel Z}. 22

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(2) Claim 2 1
Claim 2 is rejected as being unpatentable under 35 U.S.C. § 102(b) as 2
anticipated by, or alternatively, as being unpatentable under 35 U.S.C. 3
§ 103(a) as unpatentable over Koura. 4
Claim 2 reads: 5
The process according to claim 1, wherein the second 6
amount of external donor is from about 10 percent to about 200 7
percent of the first amount. 8
We interpret the claim to mean: 9
The process according to claim 1, wherein the amount of 10
the second external donor added in the second stage is from 11
about 10 percent to about 200 percent of the amount of the 12
external donor added in the first stage. 13
The ratio of (1) the 0.32 moles of CHEDMS) and 51.8 grams of Ti 14
(titanium) (col. 7:34-36) when compared to (2) the ratio of TES to titanium 15
(col. 7:63-65) anticipates the claimed percentages. 16
In the event Sunoco disagrees, we alternatively hold that one skilled in 17
the art would have no trouble whatsoever determining an appropriate 18
amount of external donor to use in the first stage vis-à-vis the amount of 19
donor to use in the second stage. Note the concentration of donors for the 20
first stage (col. 4:23-26) and the second stage (col. 5:13-16). Sunoco has not 21
established that any unexpected result is derived from its claimed 22
percentages. 23

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(3) Claim 3 1
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over 2
Koura, Sumitomo, Oskam, and Bigiavi. 3
Claim 3 reads: 4
The process according to claim 1, further comprising: 5
adding an antistatic inhibitor to the second stage. 6
Koura differs from Claim 3 in that it does not describe the addition of 7
an antistatic inhibitor to the second stage. 8
Sumitomo teaches that an antistatic agent can be used in the context of 9
a Ziegler-Natta catalyzed propylene polymerization. Col. 15:36. 10
Bigiavi describes the use of Atmer® 163, the only antioxidant 11
described in the Sunoco specification, for the purpose of killing the catalyst. 12
Col. 12:39-54. Also described (Fig. 1 and Fig. 2) are a means for 13
introducing Atmer® 163. The reason for the addition of Atmer® 163 in the 14
Bigiavi process is consistent with the Sunoco inventors' belief "that the 15
antistatic agent inhibits catalyst activity." Specification, page 5:12. 16
Oskam teaches the use of Atmer® 163 as an antistatic agent in the 17
context of a Ziegler-Natta catalyzed olefin polymerization. Col. 15:23-27. 18
In using an antistatic agent, including Atmer® 163, Sunoco is using a 19
known material for its known purpose to achieve an expected result. KSR 20
Int'l v. Teleflex, Inc., 550 U.S. 398, 417 (2007); Anderson's-Black Rock, Inc. 21
v. Pavement Salvage Co., 396 U.S. 57, 59 (1969); Agrizap, Inc. v. 22
Woodstream Corp., 520 F.3d 1337, 1343 (Fed. Cir. 2008) (the combination 23
of familiar elements according to known methods is likely to be obvious 24
when it does no more than yield predictable results). 25

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(4) Claim 4 1
Claim 4 is rejected under 35 U.S.C. § 102(b) as anticipated by Koura. 2
Claim 4 reads: 3
The process according to claim 1, wherein the second 4
stage comprises at least one gas phase reactor. 5
Koura describes the use of second stage gas phase reactor Z. 6
Col. 7:42 and 57-65. 7
(5) Claim 5 8
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over 9
Koura, Miro, Bodiford, and Yoshikiyo. 10
Example 1 of Koura differs from claim 5 in that the first stage 11
polymerization in vessels X and Y are carried out in the gas phase. 12
However, Koura teaches that its process is applicable to both gas 13
phase and liquid phase polymerization. Col. 5:40-44. 14
Miro teaches a two-stage polymerization using Ziegler-Natta 15
catalysts and an external donor in which the first phase involves a liquid 16
phase reactor and the second phase involves a gas phase reactor. 17
Col. 12:31-36 (Example 3). 18
Bodiford teaches a two-stage polymerization using Ziegler-Natta 19
catalysts and an external donor in which the first stage polymerization of 20
propylene is carried out in a liquid phase reactor. ¶ 0027. 21
Yoshikiyo describes a two-stage Ziegler-Natta catalyzed propylene 22
polymerization in which the external donor diethylaminomethoxysilane is 23
used in a liquid first stage and a gas second stage. Col. 39:35 (Example 1) 24
and col. 58:15-60 (Experimental Example 9). 25

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Sunoco's use of a liquid phase reactor for the first stage amounts to a 1
known use of a known process in a known manner to obtain nothing more 2
than an expected result. 3
(6) Claims 6-8 4
Claim 6 is rejected under 35 U.S.C. § 102(b) as anticipated over 5
Koura. 6
Claims 6-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Koura, Miro, Bodiford, Chosa, and Yoshikiyo. 8
Claim 6 calls for a Markush group of specific external donors, 9
including those mentioned in Claims 7-8. 10
Claim 7 calls for the use of diethylaminotriethoxysilane. 11
Claim 8 calls for the use of cyclohexylmethyldimethoxysilane (the 12
same compound as methylcyclohexyldimethoxysilane). 13
Koura describes the use of tetraethoxysilane (TES), an external donor 14
claimed in Claim 6. Col. 7:63. 15
Miro describes the use of dicyclopentyldimethoxysilane and 16
tetraethoxysilane in the context of Ziegler-Natta catalyst polymerization of 17
polyolefins. Col. 5:64. 18
Bodiford describes the use of methylcyclohexyldimethoxysilane 19
(Sunoco Claim 8) and diisopropyldimethoxysilane in the same context. 20
¶ 0039. 21
Chosa describes the use of diethylaminotriethoxysilane (Sunoco 22
Claim 7) in the same context. Col. 10:37. 23

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Yoshikiyo describes the use of diethylaminotriethoxysilane (Sunoco 1
Claim 7) in the same context. Col 39:35 (Example 1); col. 44:50-62 2
(Experimental Example 1); and col. 57:24-25. 3
Sunoco has used known external donors for their intended purpose to 4
achieve nothing more than an expected result. 5
In making this rejection, we realize the Examiner has not rejected 6
Claim 7. However, it does not appear that the Examiner was aware of the 7
disclosure in Chosa or Yoshikiyo. 8
(7) Claims 9-10 9
Claims 9-10 are rejected under 35 U.S.C. § 103(a) as unpatentable 10
over Koura, Bodiford, and Yoshikiyo. 11
Claim 10 is rejected under 35 U.S.C. § 102(b) as anticipated by 12
Koura. 13
Claim 9 reads (italics added): 14
The process according to claim 1, wherein the external 15
donor added to the first stage is the same as the external donor 16
added to the second stage. 17
Claim 10 reads (italics added): 18
The process according to claim 1, wherein the external 19
donor added to the first stage is different from the external 20
donor added to the second stage. 21
Claim 10 is anticipated because in Example 1, Koura describes the use 22
of CHEDMS in the first stage in vessels X and Y and the use of TES in the 23
second stage. Col. 7:54 and col. 7:63. 24

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Koura differs from claim 9 in that it uses different external donors in 1
the first and second stages. 2
Bodiford, while not adding external donor to the second phase, uses 3
the same external donor in both phases because external donor from the first 4
phase is passed along with a propylene homopolymer to the second stage 5
where block copolymerization occurs. ¶¶ 0031-0032 and Fig. 1 (product of 6
multi-reactor stage 1 discharged from 3rd Reactor 6 is passed on to second 7
stage reactor 8). 8
Yoshikiyo describes the use of the donor of Yoshikiyo Example 1 in 9
the first stage of polymerization. Col. 58:15-25 (Experimental Example 9). 10
Yoshikiyo does not explicitly describe the injection of additional external 11
donor in the second phase of the process explicitly described in 12
Experimental Example 9. But, Yoshikiyo teaches that additional donor may 13
be during the second phase. Col. 29:66 through col. 30:4. 14
The use of the same external donor in both the first and second stages 15
would have been obvious, because the external donor is used for its intended 16
purpose to achieve nothing more than an expected result. 17
(8) Claim 11 18
We will not reproduce independent Claim 11. 19
What independent Claim 11 amounts to is a combination of 20
independent Claim 1 along with [1] dependent Claim 2 (particular amounts 21
of external donor); [2] dependent Claim 4 (second stage gas phase reactor), 22
and [3] dependent Claim 5 (first stage liquid phase reactor). 23
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over 24
Koura, Miro, and Yoshikiyo. 25

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Koura describes an example in which the first stage (in vessels X 1
and Y) takes place in the gas phase and the second stage (in vessel Z) also 2
takes place in the gas phase. However, Koura's disclosure is not limited to 3
gas phase polymerization. Col. 5:40-44. 4
Koura also describes the claimed proportions of external donor. As 5
indicated earlier, should Sunoco disagree, it would be our alternative view 6
that one skilled in the art would readily be able to determine appropriate 7
amounts of external donor to be used in both a first and second stage of a 8
two-stage process. 9
Yoshikiyo describes a process in which the first stage takes place in a 10
liquid phase and the second stage takes place in a gas phase. Col. 58:15-60. 11
Miro likewise describes the combination of a first liquid phase stage 12
and a second gas phase stage. Col. 12:32-33 (Example 3). 13
(9) Claims 12-14 14
Claims 12-14 are rejected under 35 U.S.C. § 103(a) as unpatentable 15
over Koura, Miro, Bodiford, Chosa, Yoshikiyo, and Bigiavi. 16
See the discussion concerning Claim 11 and Claims 6-8. 17
(10) Claim 15 18
Claim 15 is rejected as being unpatentable under 35 U.S.C. § 103(a) 19
as unpatentable over Bodiford, Miro, Chosa, Yoshikiyo, and Bigiavi. 20
Claim 15 differs from Claim 1 in that in place of ethylene Claim 15 21
calls for the incorporation of a C4 or higher olefin. See Specification, 22
page 2:12-13. An example of a C4 olefin would be 1-butene 23
(CH2═CH─CH2─CH3). 24

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The use of α-olefins, including 1-butene, in place of ethylene is 1
known. 2
Bodiford broadly describes the use of α-olefins. ¶ 0016. 3
Miro describes, inter alia, the use of ethylene and 1-butene, as well as 4
1-hexene and 1-octene. Col. 6:30-33. 5
Chosa likewise describes copolymerization of ethylene and 1-butene. 6
Col. 11:34-36. 7
Yoshikiyo describes copolymerization of olefins, including propylene 8
and 1-butene. Col. 4:1-15. 9
Bigiavi describes polymerization of olefins with an emphasis on 10
1-butene. Col. 3:33-55. 11
Substituting 1-butene for ethylene, Sunoco amounts to using a known 12
monomer in a known manner to obtain an expected result. In this respect we 13
note that no experimental data is presented in the specification related to an 14
AAAAAA polypropylene having a BBBBBB propylene/1-butene block 15
portion. 16
Additional observations 17
Set out above are specific rejections essentially on a claim-by-claim 18
basis. However, we wish to make two additional points on the patentability 19
of all the claims. 20
Sunoco is using known process steps and known compounds in a 21
known manner to achieve an entirely expected result. 22
All the claims are unpatentable under § 103 over all the prior art, as a 23
whole, as cited and discussed above. 24
The prior art of record, taken as a whole, reveals the following. 25

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Two-stage polymerizations to make a homopolymer/copolymer block 1
copolymer are known. 2
Use of a liquid phase first stage in combination with a gas phase 3
second stage is known. 4
Use of Ziegler-Natta catalysts for Sunoco's purpose is known. 5
Use of external donors for Sunoco's purpose is known. 6
Use of a first donor in the first stage and a different donor in the 7
second stage is known. 8
Use of the same donor in both stages is known. 9
Use of the monomers claimed by Sunoco is known. 10
Use of the antistatic agent claimed by Sunoco and the antistatic agents 11
described in the specification (Atmer® 163) is known and is known to be 12
both an antistatic agent and a catalyst suppressing compound. 13
In short, Sunoco has done nothing more than use tools well known to 14
those skilled in the art and has not achieved any unexpected result. 15
For the reasons given earlier, there is no credible evidence of any 16
unexpected result. 17
Moreover, the claims are not limited to any particular polymer 18
characteristics. The only characteristics set out in the specification are those 19
in Table 1. However, one skilled in the art would not be able to reproduce 20
the experimental results of Table 1 because Sunoco neglected to state the 21
so-called "standard conditions" said to have been used. Accordingly, even if 22
the characteristics of Table 1 were added to the claims, any amended claims 23
containing those characteristics would immediately be met with a rejection 24
under 35 U.S.C. § 112 based on a lack of enablement. 25

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D. Decision 1
Upon consideration of the appeal, and for the reasons given herein, 2
it is 3
ORDERED that the decision of the Examiner rejecting 4
Claims 1-15 over the prior art is reversed. 5
FURTHER ORDERED that Claims 1-15 are rejected for the 6
reasons given above. 37 C.F.R. § 41.50(b) (2009). 7
FURTHER ORDERED that since we have entered new 8
grounds of rejection our decision is designated as a new rejection. 37 CFR 9
§ 41.50(b) (2009). 10
FURTHER ORDERED that our decision is not a final agency 11
action. 12
FURTHER ORDERED that within two (2) months from the 13
date of our decision appellant may further prosecute the application on 14
appeal by exercising one of the two following options: 15
1. Request that prosecution be reopened by submitting 16
an amendment or evidence or both. 37 CFR § 41.50(b)(1) (2009). 17
2. Request rehearing on the record presently before the 18
Board. 37 CFR § 41.50(b)(2) (2009). 19
FURTHER ORDERED that no time period for taking any 20
subsequent action in connection with this appeal may be extended under 21
37 C.F.R. § 1.136(a)(1)(iv) (2008). 22

REVERSED
New grounds of rejection under 37 C.F.R. § 41.50(b) (2009)

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31
KMF

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