Ex Parte Thorman et al

Board of Patent Appeals and Interferences

Aug 21, 2012

11897361 (B.P.A.I. Aug. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/897,361 08/30/2007 Joseph Thorman COS-1050 CIP 5122
25264 7590 08/22/2012
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
LU, C CAIXIA
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
08/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOSEPH THORMAN and SHADY HENRY
________________

Appeal 2011-009159
Application 11/897,361
Technology Center 1700
________________

Before ROMULO H. DELMENDO, DEBORAH KATZ, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009159
Application 11/897,361

1
The Examiner finally rejected claims 1-19 of Application 11/897,361
for failing to comply with the written description requirement of 35 U.S.C.
§ 112, ¶ 1, as anticipated under 35 U.S.C. § 102(b), and/or as obvious under
35 U.S.C. § 103(a). Appellants seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
Background
Transition metal catalysts, particularly metallocene catalysts, are able
to form polyolefins with desirable properties. Spec. ¶ [0003]. These catalysts
have not been widely adopted in industry because they are higher cost and
have lower productivity than traditional Ziegler-Natta catalysts. Id. Thus,
there is a need to develop transition metal catalysts that have higher
productivity but that retain the desirable polymer properties associated with
such catalysts. Id. at ¶ [0004].
The ’361 application describes methods for creating supported
transition metal catalyst systems. Id. at ¶ [0005]. Claim 1 is the only
independent claim in the application and is reproduced below:
1. A method of forming a catalyst system
comprising:
providing a support material;
providing a transition metal catalyst compound;
contacting the transition metal catalyst compound with
triisobutyl aluminum (TiBAl) to form a modified catalyst
compound; and
contacting the support material with the modified catalyst
compound to form a supported catalyst system, wherein the
support material is not contacted with TiBAl prior to contact of
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Application 11/897,361

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the support material with the transition metal catalyst
compound.
App. Br. 6.
Rejections
1. The Examiner finally rejected claim 18 under 35 U.S.C. § 112, ¶ 1
for failing to comply with the written description requirement.
Ans. 3.
2. The Examiner finally rejected claims 1-7, 9-11, and 14-17 under
35 U.S.C. § 102(b) as anticipated by U.S. Patent No. 5,698,487
(“Sacchetti,” issued Dec. 16, 1997). Id. at 4.
3. The Examiner finally rejected claims 6,1 8, 12-13, and 19 under
35 U.S.C. § 103(a) as obvious over Sacchetti in view of U.S.
Patent No. 5,990,242 (“Naga,” issued Nov. 23, 1999), U.S. Patent
No. 5,677,408 (“Ueda,” issued Oct. 14, 1997), U.S. Patent No.
6,911,516 B1 (“Mihan,” issued June 28, 2005), and U.S. Patent
No. 6,916,892 B2 (“Tharappel,” issued July 12, 2005). Id. at 5.
4. The Examiner finally rejected claims 1-19 under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent No. 6,353,063 B1
(“Shimizu,” issued March 5, 2002) in view of Sacchetti, Naga, and
Ueda.
5. The Examiner finally rejected claims 1-19 under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent Application Publication
2004/0204310 A1 (“Gauthier,” Oct. 14, 2004) in view of Sacchetti,
Naga, and Ueda. Id. at 8.

1 The Examiner included claim 6 in this ground of rejection in the Final
Office Action, but omitted it from this rejection in the Answer. We assume
that the omission was a clerical oversight.
Appeal 2011-009159
Application 11/897,361

3
Discussion
Rejection 1. Claim 18 is reproduced below:
18. The method of claim 1, wherein the catalyst system is
absent magnesium.
App. Br. 7. This claim was added to the application by way of an April 29,
2010, Amendment. The Examiner rejected the claim under 35 U.S.C. § 112,
¶ 1 for failing to comply with the written description requirement, alleging
that the limitation “the catalyst system is absent magnesium” is new matter.
Ans. 3.
Appellants argue that the new claim limitation need not be positively
stated in the specification so long as a person of ordinary skill in the art
could practice the invention upon a full reading of the specification. App. Br.
3. Appellants argue that a person of ordinary skill in the art “reading the
instant Specification would render the absence of magnesium an
embodiment thereof.” Id. (citing Spec. ¶¶ [0038]-[0039]).
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The inquiry into
whether the description requirement is met is a question of fact. In re
Wertheim, 541 F.2d 257, 262, (CCPA 1976).
The ’361 application’s Specification contains no indication that
Appellants were in possession of claim 18’s subject matter at the time the
application was filed. The paragraphs cited by Appellants as support for
their contention support, at most, the idea that they differentiated between
various types of support materials for the catalysts. See Ans. 10-11.
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Application 11/897,361

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For this reason, the Examiner’s rejection of claim 18 as containing
new matter is supported by a preponderance of the evidence, and we sustain
it.
Rejection 2. The Examiner rejected claims 1-7, 9-11, and 14-17 as
anticipated by Sacchetti. Ans. 4. In support of this rejection, the Examiner
cites Sacchetti’s generic description of methods for supporting a metallocene
compound on a solid support, id. (quoting Sacchetti, col. 5, l. 47-col. 6, l. 6),
as well as a specific example of catalyst preparation and use, id. (citing
Sacchetti, col. 12, ll. 23-67 (Example 6)).
Appellants only identify two alleged errors in the Examiner’s
findings: (1) that Sacchetti fails to teach propylene polymerization, as recited
in claim 15, App. Br. 3, and (2) that Sacchetti teaches contacting a
magnesium chloride support with TiBAl prior to contact with the transition
metal, id. at 4.
Our review of Sacchetti indicates that neither of these objections is
well founded. First, as cited by Examiner, Sacchetti describes the specific
properties of polypropylenes obtained from catalysts using a chiral
metallocene. Sacchetti, col. 8, ll. 14-17. Sacchetti thus describes the use of
catalysts prepared by the disclosed methods as useful for polymerizing
propylene. Second, Sacchetti’s Example 6 describes the preparation of a
supported catalyst system in which the support material is not contacted with
TiBAl prior to contact with the transition metal catalyst. Id. at col. 12, ll. 23-
67.
For these reasons, we sustain the Examiner’s rejection of claims 1-7,
9-11, and 14-17 as anticipated by Sacchetti.
Appeal 2011-009159
Application 11/897,361

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Rejection 3. The Examiner rejected claims 6, 8, 12, 13, and 19 under
35 U.S.C. § 103(a) as obvious over Sacchetti in view of Naga, Ueda, Mihan,
and Tharappel. Ans. 5.
Appellants do not advance any new arguments against this rejection,
merely arguing that the additional references do not remedy the alleged
defects in Sacchetti identified in their arguments against the anticipation
rejection.
For the reasons discussed in connection with Rejection 2, we sustain
these rejections.
Rejection 4. The Examiner rejected claims 1-19 under 35 U.S.C.
§ 103(a) as obvious over Shimizu in view of Sacchetti, Naga, and Ueda.
Id.at 7.
Appellants argue that Shimizu does not teach the treatment of a
transition metal catalyst with TiBAl. In particular, Appellants allege that the
Examiner erroneously stated that “‘Shimizu discloses a supported
metallocene catalyst composition wherein the metallocene complex is
treated with an alkyl-Al compound’ and refers to the end of column 5.” App.
Br. 4 (citing Final Office Action (“FOA”) at 5 (June 23, 2010).
Appellants have misunderstood and misquoted the Examiner. The
Examiner—both in the FOA and the Answer—states that Sacchetti discloses
the supported metallocene compound. FOA 5; Ans. 7. Appellants’ argument
is without merit, and we sustain the Examiner’s rejection of these claims
over this combination of references.
Rejection 5. The Examiner rejected claims 1-19 under 35 U.S.C.
§ 103(a) as obvious over Gauthier in view of Sacchetti, Naga, and Ueda.
Ans. 8.
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Application 11/897,361

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Appellants argue that the Examiner admits that Gauthier “does not
expressly disclose that the metallocene complex is contacted with the
organoaluminum compound prior to contacting with the supported
activator.” App. Br. 5 (citing FOA 7). Appellants then argue that Sacchetti,
which is cited by the Examiner as supplying this missing teaching, “does not
teach, show or suggest numerous features of the pending claims.” Id.
As discussed in connection with Rejection 2, the Examiner’s finding
that Sacchetti does supply the necessary missing teaching is supported by a
preponderance of the evidence. For this reason, we sustain the Examiner’s
rejection of claims 1-19 as obvious over this combination of references.
Conclusion
We sustain the Examiner’s rejection of claim 18 under 35 U.S.C.
§ 112, ¶ 1. We also sustain the Examiner’s rejection of claims 1-7, 9-11, and
14-17 under 35 U.S.C. § 102(b) as anticipated by Sacchetti and of claims 6,
8, 12, 13, and 19 under 35 U.S.C. § 103(a) as obvious over Sacchetti in view
of Naga, Ueda, Mihan, and Tharappel.
Furthermore, we sustain the Examiner’s rejection of claims 1-19
under 35 U.S.C. § 103(a) as obvious over Shimizu in view of Sacchetti,
Naga, and Ueda.
Finally, we sustain the Examiner’s rejection of claims 1-19 under
35 U.S.C. § 103(a) as obvious over Gauthier in view of Sacchetti, Naga, and
Ueda.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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