Ex Parte Sydora et al

Patent Trial and Appeal Board

Sep 26, 2017

13323328 (P.T.A.B. Sep. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
211012US00 (4081-11700) 7725
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
13/323,328 12/12/2011 Orson L. Sydora
37814 7590 09/26/2017
CHEVRON PHILLIPS CHEMICAL COMPANY
5601 Granite Parkway, Suite 500
PLANO, TX 75024
09/26/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ORSON L. SYDORA, RONALD D. KNUDSEN, and
EDUARDO J. BARALT
Appeal 2016-008184
Application 13/323,328
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision finally rejecting claims 1, 5, 9, 12, 13, 15, 16, 19, and
1 Our decision refers to the Specification (Spec.) filed December 12, 2011,
the Examiner’s Final Office Action dated September 4, 2015, Appellants’
Appeal Brief (Appeal Br.) filed February 4, 2016, the Examiner’s Answer
(Ans.) dated July 8, 2016, and Appellants’ Reply Brief (Reply Br.) filed
September 1, 2016.
2 According to Appellants, the real party in interest is Chevron Phillips
Chemical Company, LP. Appeal Br. 3.
Appeal 2016-008184
Application 13/323,328
20 under 35 U.S.C. § 102(b) as anticipated by Knudsen.3 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to an olefin oligomerization catalyst. Spec.,
Title. Appellants disclose one widely employed ethylene trimerization
catalyst system comprises a chromium carboxylate, a pyrrole compound, and
a metal alkyl. Spec. 12. Appellants disclose as one example of such a
known system Cr(III)tris(2-ethylhexanoate), 2,5-dimethylpyrrole,
triethylaluminum, and diethylaluminum chloride. Id. However, according
to Appellants, batch-to-batch variations in the quality of commercial
Cr(III)tris(2-ethylhexanoate) and the attendant inconsistency in catalytic
system performance, which can have significant impacts upon ethylene
trimerization productivity and selectivity. Id. ^3. Thus, Appellants disclose
it would be useful to develop new catalyst systems and methods of making
them that might improve the trimerization process efficiency and cost
effectiveness. Id.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A composition comprising:
a) a chromium(III) C3—C25 carboxylate composition
i) having a KBr pellet infrared spectrum with a DaSym
(CO2) infrared absorbance peak within 110 cm'1 of the
Oasym (CO2) infrared peak and having an infrared
3 Knudsen et al., US 2007/0043181 Al, published February 22, 2007
(“Knudsen”).
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Appeal 2016-008184
Application 13/323,328
absorbance peak height ratio of a nasym (CO2) infrared
absorbance peak at 1516 ± 15 cm'1 to infrared absorbance
peak located at 700 ± 50 cm'1 greater than or equal to 3:1,
ii) having a goodness of fit test value, R2, of at least 0.6
when comparing high-energy X-ray diffraction g(r) data
points of the chromium(III) C3—C25 carboxylate
composition to calculated high energy X-ray diffraction
g(r) data points of a theoretical model of mononuclear
chromium(HI) acetate over an r range from 1.3
Angstroms to 4 Angstroms, or
iii) produced by a process comprising
contacting under substantially anhydrous and
substantially acid-free conditions
1) a chromium(III) precursor having a formula
CrX^ L/ where each X independently is a halide,
each L independently is a C2-C10 ether, a C2-C10
thioether, a C2-C5 nitrile, a C1-C30 amine, or a
C3-C30 phosphine, or any combination thereof, and
£ ranges from 0 to 7,
2) a Group 1 or Group 2 metal C3-C25 carboxylate,
and
3) a first solvent;
b) a pyrrole compound; and
c) a metal hydrocarbyl compound.
ANALYSIS
The dispositive issue before us in this appeal is whether Appellants
have identified reversible error in the Examiner’s finding that Knudsen
teaches the same composition as recited in claim 1. Appellants argue that
the composition of Knudsen, in particular the Cr(III)tris(2-ethylhexanoate)
disclosed in Knudsen, is different from that required in claim 1 because of
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Appeal 2016-008184
Application 13/323,328
differences in the processes of making these chromium carboxylates and
differences in their infrared (IR) spectral data. Appeal Br. 7—9; Reply Br. 4—
8. For the reasons set forth below and in the Appeal and Reply Briefs, we
are persuaded that the composition as recited in claim 1 is not the same
composition disclosed in Knudsen. Accordingly, we will not sustain the
Examiner’s anticipation rejection.
The Examiner finds that Knudsen teaches the composition of claim 1
because Knudsen teaches a composition comprising Cr(III)tris(2-
ethylhexanoate), 2,5-dimethylpyrrole, triethylaluminum, and
diethylaluminum chloride. Final Act. 3. This is the same composition
Appellants admit was known. Spec. 12. The Examiner acknowledges that
Appellants’ Cr(III)tris(2-ethylhexanoate) is made by a different process from
Knudsen’s Cr(III)tris(2-ethylhexanoate). Final Act. 4. However, the
Examiner notes that claim 1 recites the process by which the chromium
carboxylate is made as an alternative within the claim and, citing In re
Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) and In re Marosi, 710 F.2d 799,
803 (Fed. Cir. 1983), shifts the burden to Appellants to come forward with
evidence establishing an unobvious difference between the claimed product
and Knudsen ’ s. Id.
Appellants note that the Examiner finds the claimed product and that
of Knudsen are made by different processes. Appeal Br. 7. Appellants’
urge that the products made by these different processes are not the same
products as exemplified by their different IR spectra. Id. at 9. In particular,
Appellants contend that Knudsen’s IR spectra differ from Appellants’ in that
Knudsen’s IR spectra do not show a peak at 1516 ± 15 cm-1 as shown in
Appellants’ Figures 10, 12, and 14. As such, as Appellants argue, the
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Appeal 2016-008184
Application 13/323,328
Examiner has not provided a rationale tending to show that the claimed
product appears to be the same as Knudsen’s.
We are mindful that the Examiner relies on the product-by-process
limitation for the Cr(III)tris(2-ethylhexanoate) (claim l(a)(iii)) rather than
the IR spectral limitation or the X-ray diffraction data limitation to support
the anticipation rejection. However, merely because Appellants recite the
product in product-by-process language does not relieve the burden on the
Examiner to establish a reasonable basis for believing that the products of
the claim and the prior art are the same. Particularly in a case such as this,
where the processes are different and there is evidence within the prior art
teaching and the disclosure that demonstrates that the resulting products are
not the same, the Examiner cannot shift the burden to Appellants without
articulating a rationale based on technical reasoning or evidence in the
record why the products are nonetheless likely to be the same.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 5, 9, 12, 13, 15, 16, 19, and 20 under 35 U.S.C. § 102(b) as
anticipated by Knudsen is reversed.
REVERSED
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