Ex Parte Wang et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10659169 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LIN WANG, MARIA SPINU, and JOEL DAVID CITRON
____________

Appeal 2009-000308
Application 10/659,169
Technology Center 1700
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Decided:1 June 30, 2009
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000308
Application 10/659,169

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 26-28, 30-33, and 35-39 (Final Office
Action, mailed Aug. 25, 2006), the only claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 26, the sole independent claim, is illustrative of the subject
matter on appeal, and is reproduced from the Claims Appendix to the Appeal
Brief (“Br.”), filed Jul. 30, 2007:

26. A process for producing a blend of two or more polyethylenes,
comprising the step of contacting:

(1) ethylene;

(2) one or more separately added α-olefins of the formula
R18CH=CH2, wherein R18 is alkyl, wherein R18 has an even number of
carbon atoms;

(3) a first active polymerization catalyst under conditions to
copolymerize ethylene and the separately added α-olefins; and

(4) a second active polymerization catalyst under conditions to
polymerize ethylene, but has little or no tendency to
copolymerize ethylene and α-olefins,

and provided that said first and said second active polymerization catalysts
are selected from the group consisting of Ziegler-Natta catalysts and
metallocenes,

and further provided that when said first active polymerization catalyst and
said second active polymerization catalyst are both metallocenes, said one or
more separately added olefins is a series of olefins of the formula
R18CH=CH2.

Appeal 2009-000308
Application 10/659,169

3
Appellants request review of the sole ground of rejection (Br. 5):
claims 26-28, 30-33, and 35-39 under 35 U.S.C. § 103(a) as unpatentable
over EP 0,128,046 (“EP 046”), published Dec. 12, 1984 (Examiner’s
Answer (“Ans.”), mailed Nov. 19, 2007, 3).

ISSUE
Have Appellants shown reversible error in the Examiner’s finding that
EP 046 suggests the use of two or more α-olefins as required by claim 26?
We answer this question in the negative.
FINDINGS OF FACT
EP 046 “is directed towards a catalytic process for the polymerization
of ethylene and one or more alpha-olefins to polyethylene-copolyethylene-
alpha-olefin reactor blends” (p. 4, ll. 27-30 (emphasis added)). “In
particular, the polymer blends . . . are blends of polyethylenes . . . with
copolyethylene higher alpha-olefins having from 3 to about 10 carbon atoms
and preferably 4 to 8 carbon atoms” (p. 4, l. 32-p. 5, l. 1 (emphasis added)).
“Illustrative of the higher alpha-olefins are propylene, butene-1, hexane-1
and octane-1” (p. 5, ll. 1-2). “In the process . . ., ethylene, together with the
alpha-olefins, is polymerized in the presence of a homogeneous catalyst
system comprising at least two different metallocenes and an alumoxane” (p.
5, ll. 4-7 (emphasis added)).
PRINCIPLES OF LAW
In considering the question of the obviousness of a claimed invention
in view of the prior art relied upon, we are guided by the basic principle that
the question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
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Application 10/659,169

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in the art at the time of the invention. See Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807-08 (Fed. Cir. 1989); In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed
invention must be expressly suggested in any one or all of the references.”).
An obviousness rejection predicated on selection of one or more
components from numerous possible choices may be appropriate if the prior
art provides direction as to which of many possible choices is likely to be
successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1364 (Fed Cir. 2007); In re Arkley, 455 F.2d 586, 587-88 (CCPA
1972) (noting that “picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant must be
afforded an opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the subject matter which
he claims to the prior art”); cf. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (explaining that it is erroneous to conclude “that a patent claim
cannot be proved obvious merely by showing that the combination of
elements was ‘obvious to try’”); In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
ANALYSIS
Appellants’ sole argument on appeal is that the Examiner erred in
finding that EP 046 suggests the use of two or more α-olefins as required by
claim 262. (See Br. 5.) According to Appellants, EP 046 is “ambiguous in

2 We note that where two metallocene catalysts are used, as in the EP 046
process, the conditional limitation in the final clause of claim 26 is met,
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Application 10/659,169

5
suggesting whether or not two or more α-olefins are used.” (Br. 6.)
Appellants do not disagree that EP 046 could be interpreted as disclosing the
use of more than one α-olefin. (See, e.g., Br. 6 (“points (d) and (j)
unambiguously support the use of more than one α-olefin”); infra quotations
from Br. 7.) Rather, Appellants contend that the ordinary artisan would be
more likely to interpret the reference as limited to one α-olefin. (See, e.g.,
Br. 7 (“Although in theory more than one α-olefin could be used to make an
LLDPE, one skilled in the art would immediately think of LLDPE that
contains only one α-olefin, since these are by far more common than those
that could contain more than one α-olefin.”).)
We are not persuaded of reversible error on the part of the Examiner.
As admitted by Appellants, EP 046 is reasonably interpreted as suggesting
the use of more than one α-olefin. (See supra quotations from Br. 6, 7.)
Further, as pointed out by the Examiner, EP 046 identifies a group of four
preferred α-olefins (Ans. 3) such that “the odds of selecting applicants’
claimed combination from the list of specifically named monomers is one in
two” (Ans. 5). Appellants have not addressed this finding. (See generally,
Br.)
Where the Examiner establishes a reasonable basis to conclude that
the claimed invention is obvious, the burden shifts to the Appellants to rebut
the prima facie case by providing evidence of unexpected results or a
showing that the prior art teaches away from the claimed invention in any
material respect. See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.

thereby invoking the additional requirement that the “one or more separately
added olefins is a series.”
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1997). Appellants’ Brief contains nothing more than attorney argument,
which in insufficient to meet this burden. Id. at 1471.
CONCLUSION
Appellants have not identified reversible error in the Examiner’s
obviousness determination. The decision of the Examiner rejecting claims
26-28, 30-33, and 35-39 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)(v).

AFFIRMED

PL Initial:
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