Ex parte Natta et al.

Board of Patent Appeals and Interferences

Jul 29, 1998

07883912 (B.P.A.I. Jul. 29, 1998)

Application for patent filed May 12, 1992. According1
to appellants, this application is a continuation of
Application No. 07/719,666, filed June 24, 1991; which is a
continuation of Application No. 07/607,215, filed October 29,
1990; which is a continuation of Application No. 06/906,600,
filed September 10, 1986; which is a continuation of
Application No. 06/498,699, filed May 27, 1983; which is a
continuation of Application No. 04/710,840, filed January 24,
1958; which is a division of Application No. 04/514,097, filed
June 8, 1955; all abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 76
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GUILIO NATTA, PIERO PINO
and GIORGIO MAZZANTI
________________
Appeal No. 95-2683
Application No. 07/883,9121
________________
ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and WEIFFENBACH, Administrative
Patent Judges.
KIMLIN, Administrative Patent Judge.
Appeal No. 95-2683
Application No. 07/883,912
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Appeal No. 95-2683
Application No. 07/883,912
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DECISION ON APPEAL
This is an appeal from the final rejection of claims 11-
17, all the claims remaining in the present application.
Claim 11 is illustrative:
11. A process which comprises interpolymerizing ethylene
with an alpha olefin CHR=CH wherein R is a saturated2
aliphatic radical with 2 or more carbon atoms or a
cycloaliphatic radical, in the presence of a coordination
catalyst, one component of which contains a Ti-Cl bond.
In the rejection of the appealed claims, the examiner
relies upon the following references:
Anderson et al. (Anderson) 2,905,645 Sep. 22, 1959
Vandenberg 3,058,963 Oct. 16, 1962
Appellants' claimed invention is directed to a process
for interpolymerizing ethylene and an alpha olefin of the
recited formula in the presence of a coordination catalyst
having a component containing a Ti-Cl bond.
Appellants submit at page 2 of the principal Brief that
"[t]he claims are not grouped separately." Accordingly, all
the appealed claims stand or fall together as they are grouped
by the examiner in different rejections.
Claims 11 and 17 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based upon an original specification
that does not provide descriptive support for the claim
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Application No. 07/883,912
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language "coordination catalyst, one component of which
contains a Ti-Cl bond." Claims 11-17 stand rejected under
35 U.S.C. § 112, first paragraph, as being based upon an
original specification that does not provide descriptive
support for the claim language "interpolymerizing ethylene
with an alpha olefin CHR=CH wherein R is a saturated2
aliphatic radical with 2 or more carbon atoms or a
cycloaliphatic radical" (claim 11) and "interpolymerizing
ethylene with styrene C H CH=CH " (claim 17). Claims 11-13 and6 5 2
17 stand rejected under 35 U.S.C. § 102(e) as being clearly
anticipated by Vandenberg. Claims 14-16 stand rejected under
35 U.S.C. § 103 as being unpatentable over Vandenberg. Also,
claims 11-17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Anderson in view of Vandenberg.
We will sustain the examiner's rejection of claims 11 and
17 under 35 U.S.C. § 112, first paragraph. The examiner has
set forth an explanation that the term "coordination catalyst"
is not described within the meaning of § 112, first paragraph,
in appellants' original U.S. Application Serial No.
04/514,097, filed June 8, 1955 and Italian Patent Application,
Serial No. 25109, filed July 27, 1954, which applications
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Application No. 07/883,912
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appellants claim priority under 35 U.S.C. § 120 and 35 U.S.C.
§ 119, respectively. For instance, the examiner explains that
coordination catalysts "were known to be able to be formed
from titanium chloride and a Group I alkyl compound or an
elemental non-transition metal such as aluminum or lithium"
(page 4 of Answer), and the applications upon which appellants
base priority do not disclose that the catalysts of the
present invention are formed from such materials. Also, the
examiner points out that there is no evidence of record which
establishes that the catalyst compositions described in the
original applications were known by those skilled in the art
as "coordination catalysts." On the other hand, our review of
appellants' principal and Reply Briefs reveals that appellants
have not advanced any substantive argument that rebuts the
examiner's position. Indeed, appellants' principal and Reply
Briefs present no argument that the claim language
"coordination catalyst" is described in the applications upon
which priority is based. Consequently, we will sustain the
examiner's rejection.
Although appellants have presented no substantive
arguments refuting the rejection discussed above, appellants
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have presented arguments of a legal nature that are applicable
to all the examiner's rejections. Appellants contend that
their count in an earlier interference proceeding of the
present invention is of the same breadth as claim 11 presently
on appeal and, therefore, since the interference count was
considered allowable by Examiner Schoffer, Manual of Patent
Examining Procedure (MPEP) § 706.04 warrants our reversal of
the examiner's rejection. In relevant part, appellants rely
upon the language of the MPEP which states "[i]n general, an
examiner should not take an entirely new approach or attempt
to reorient the point of view of a previous examiner . . ."
We do not subscribe to appellants' position. The MPEP
provides general guidance to the Examining Corps, and such
guidance is not tantamount to a proscription on an examiner's
entry of a new rejection of an allowed claim. While the
examiner's rejection may be a petitionable matter to the
Commissioner of the U.S. Patent and Trademark Office (PTO),
our scope of review does not extend to such matters. The
guidance given by the relevant section of the MPEP can not
serve to preclude our review of the merits of the examiner's
rejection before us, or mandate our reversal of the rejection.
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Further-more, the PTO is within its statutory right to reject
an application at any time before issuance.
Appellants also contend that the Board is bound by the
decision in Anderson v. Natta, 480 F.2d 1392, 178 USPQ 458
(CCPA 1973), which decision awarded priority to appellants.
According to appellants, we are bound "from reaching a
different conclusion on the patentability of the claimed
subject matter to Natta et al." (page 11 of principal Brief).
However, res judicata is not applicable to the present appeal
since the court in Anderson v. Natta did not address the
rejection under 35 U.S.C. § 112, first paragraph, presently
before us. Indeed, the court expressly refused to entertain
arguments pertinent to 35 U.S.C. § 112, first paragraph, since
such arguments were not at issue "at any point below, and we
will not consider it for the first time on appeal." Anderson
v. Natta, 480 F.2d at 1399, 178 USPQ at 463.
We are also not persuaded by appellants' argument that
res judicata and collateral estoppel from the earlier
interference proceeding precludes us from reviewing the
examiner's rejections because a final judgment in an
interference is conclusive of all matters that were
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adjudicated and might have been adjudicated. The cases cited
by appellants, e.g., Ex parte Tygat, 225 USPQ 907 (Bd. App.
1985) and Ex parte Kroekel, 230 USPQ 191 (Bd. Pat. App. & Int.
1986), stand for the proposition that parties to an
interference cannot reinstitute matters that were adjudicated
or might have been adjudicated in a prior interference
proceeding, but such cases place no prohibition on the PTO to
reopen prosecution of any application before issuance,
including the applications of winning parties in an
interference. Appellants have cited no legal authority to
support the principle that the PTO is estopped from reopening
prosecution and entering a new ground of rejection in an
application that prevailed in an interference, and we know of
no such authority.
We will not sustain the examiner's rejection of claims
11-17 under 35 U.S.C. § 112, first paragraph, on the basis
that there is no descriptive support for the claim language
"interpolymerizing ethylene with an alpha olefin CHR=CH2
wherein R is a saturated aliphatic radical with 2 or more
carbon atoms or a cycloaliphatic radical" (claim 11) and
"interpolymerizing ethylene with styrene C H CH=CH " (claim6 5 2
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17). The thrust of the examiner's rejection is that the
original specification provides an upper limit of 5% ethylene,
but the appealed claims encompass an unlimited range for the
amount of ethylene. On this point we agree with the reasoning
presented by appellants at pages 17 and 18 of the principal
Brief. Fatal to the examiner's rejection is the fact that the
appealed claims contain no language regarding the amount of
ethylene used in the polymerization process that is not
described in the original specification. For instance, the
appealed claims do not recite that the amount of ethylene is
in excess of 5%. While it can be argued that the appealed
claims encompass amounts of ethylene greater than 5%, it is
well settled that it is not the function of the claims to
specifically exclude possible inoperable substances or
ineffective reactant proportions. In re Dinh-Nguyen, 492 F.2d
856, 858-59, 181 USPQ 46, 48 (CCPA 1974); In re Anderson, 471
F.2d 1237, 1242, 176 USPQ 331, 334-35 (CCPA 1973). See also
In re Kamal, 398 F.2d 867,
872, 158 USPQ 320, 324 (CCPA 1968); and In re Sarett, 327 F.2d
1005, 1019, 140 USPQ 474, 486 (CCPA 1964). In our view, the
examiner's line of reasoning is more appropriate for a
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Application No. 07/883,912
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rejection under the enablement requirement of 35 U.S.C. § 112,
first paragraph. However, the examiner has effectively
precluded any rejection under the enablement requirement of §
112, first paragraph, by dismissing the Corradini, Giannini I
and Giannini II declarations as "directed to the proposition
of enablement" (page 8 of Answer).
As for the examiner's position that the original
specification does not provide equivalent language for the
claim language "interpolymerizing ethylene with an alpha
olefin CHR=CH wherein R is a saturated aliphatic radical with2
2 or more carbon atoms or a cycloaliphatic radical" and
"interpolymerizing ethylene with styrene C H CH=CH ," we find6 5 2
that the passages in the specification cited by the examiner
provide descriptive support for the criticized claim language
within the meaning of § 112, first paragraph. For instance,
see page 10, lines 10-14 of the original specification.
We now turn to the examiner's rejections of claims 11-13
and 17 under § 102 over Vandenberg, claims 14-16 under § 103
over Vandenberg and claims 11-17 under § 103 over Anderson in
view of Vandenberg. Appellants state that the dispositive
issue for these rejections is whether parent application U.S.
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Serial No. 514,097 and Italian Patent Application, Serial No.
25109, antedate the effective dates of Anderson and Vandenberg
as references. Since we agree with the examiner that the
original specification does not provide descriptive support
for the language "coordination catalyst" appearing in
independent claims 11 and 17, and appealed claims 12-16 all
ultimately depend upon independent claim 11, it follows that
we find that the presently claimed subject matter is not
afforded the filing dates of the U.S. and Italian applications
relied upon by appellants and, therefore, appellants have not
obviated the prior art rejections over Vandenberg alone and in
combination with Anderson.
In conclusion, based on the foregoing, 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 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
Appeal No. 95-2683
Application No. 07/883,912
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)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
Appeal No. 95-2683
Application No. 07/883,912
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Maurice B. Stiefel
Bryan Cave
245 Park Ave.
New York, NY 10167-0034