GALIMBERTI et al.v.ASANUMA et al.

Board of Patent Appeals and Interferences

May 18, 1998

08182348 (B.P.A.I. May. 18, 1998)

Application No. 07/721,049, filed June 26, 1991, now1
U.S. Patent No. 5,196,496, issued March 23, 1993. Accorded
Benefit of Italian Patent Application No. 20778 A/90, filed
June 27, 1990.
Application No. 08/182,348, filed January 18, 1994. 2
Accorded Benefit of U.S. Application Nos. 07/568,054, filed
August 16, 1990, now abandoned; 07/513,851, filed April 24,
1990, now abandoned; 07/995,908, filed December 22, 1992, now
abandoned; and 07/956,457, filed October 2, 1992, now
abandoned; and Japanese Patent Application No. 137402/1989,
filed June 1, 1989.
-1-
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journal and (2) is not binding precedent of the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. 92
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

MAURIZIO GALIMBERTI, ENRICO ALBIZZATI
and ROMANO MAZZOCCHI
Junior Party,1
TADASHI ASANUMA, TETSUNOSUKE SHIOMURA, NOBUTAKA UCHIKAWA,
TATEYO SASAKI, OSAMU UCHIDA, TUTOMU IWATANI,
SHIGERU KIMURA and TAKEO INOUE
Senior Party.2

Interference No. 103,303

FINAL HEARING: November 18, 1997

Interference No. 103,303
-2-
RONALD H. SMITH, SOFOCLEOUS and HANLON, Administrative Patent
Judges.
SOFOCLEOUS, Administrative Patent Judge.
FINAL DECISION
The subject matter of this interference relates to
crystalline copolymers of propylene and 1-butene and a process
for preparing the copolymers. The counts of this interference
are as follows:
Count 1
Crystalline copolymers of propylene and 1-butene with an
essentially syndiotactic structure, containing from 1.3 to
10 mole % of 1-butene units, having a melting point from 110E
to 140EC., a fraction soluble in xylene at 25EC. less than 10%
by weight, and a composition similar to the mixture of the
monomers present in the gas phase during preparation of said
polymer, wherein the difference between the amount of
comonomer present in the gas phase and the amount of comonomer
in said composition is between 13% to 23% less in the
composition of said copolymer;
or
a syndiotactic propylene copolymer comprising 76 to 99 mole %
of propylene and 1 to 24 mole percent of butene wherein in the
C-NMR spectrum of said syndiotactic propylene copolymer, said13
copolymer exhibits a ratio of the intensity of a peak at about
20.2 ppm to the sum of the intensities of the total peaks
attributable to methyl groups in propylene units at about 19-
22 of 0.5 or more.
Count 2
A process for the preparation of the copolymers of count 1
comprising the polymerization of gaseous mixtures of propylene
Interference No. 103,303
-3-
and 1-butene with catalysts obtained from isopropyl
(cyclopentadienyl-
1-fluorenyl) hafninum or zirconium dichloride and polymethyl-
aluminoxane cyclic or linear compounds of the formula
(A1)O)n
*
CH3
Interference No. 103,303
-4-
where n is a number from 2 to 25 and
CH )(A1)O) A1(CH ) .3 n 3 2
*
CH3
where n is a number from 1 to 25, operating under conditions
where the 1-butene molar content present in the gas mixture
being continuously fed is from 1.5 to 10%, and the
polymerization is conducted in the liquid phase, at a
temperature of from -30E to 70EC,
or
the polymerization of propylene and butene with catalysts
obtained from isopropyl (cyclopentadienyl-1-fluorenyl) hafnium
dichloride or isopropyl (cyclopentadienyl-1-fluorenyl)
zirconium dichloride and polymethylaluminoxane cyclic or
linear compounds of the formula
CH 3
â„¢
CH )(A1)O) )A13 n
* (
CH CH 3 3
or
+)))))))),
.)(A10) ) -n
*
CH

where n is at least 5, operating under conditions where the
ratio of butene to the total constitutional monomer units of
the copolymer is from 1 to 24 mole %, and the polymerization
is conducted in the liquid phase, at a temperature of from -
100EC to 100EC.
Interference No. 103,303
The Galimberti et al. record and exhibits will be3
referred to, respectively, as GR followed by its page number
and GX followed by its number. The Asanuma et al. record and
exhibits will be referred to, respectively, as AR followed by
its page number and AX followed by its number.
-5-
The party Galimberti et al.'s claim 1 and the party
Asanuma et al.'s claims 9 and 11 correspond to count 1. The
party Galimberti et al.'s claim 2 and the party Asanuma et
al.'s claims 16 correspond to count 2.
The junior party Galimberti et al. relies under 35 U.S.C.
§ 119 upon the priority date of its application filed in
Italy. Since that date is subsequent to the effective filing
date of the senior party Asanuma et al., judgment pursuant to
37 CFR § 1.640(d)(3) would normally be issued against the
party Galimberti et al. The party Galimberti et al. filed a
motion on the ground that an interference-in-fact does not
exist and consideration of the motion was deferred to final
hearing. Both parties took testimony, filed briefs, and3
appeared, through counsel, at final hearing. In addition, the
parties filed three motions to suppress evidence and
testimony.
Subsequent to the final hearing, the party Galimberti et
al. filed a submission (Paper No. 91), which is objected to by
Interference No. 103,303
-6-
the party Asanuma et al. 37 CFR § 1.654(d) provides that
after final hearing no further paper shall be filed except
under 37 CFR § 1.658(b) or as authorized by the Administrative
Patent Judge (APJ) or the Board. Since the party Galimberti
et al.'s submission does not fall within one of the exceptions
enumerated by the rule, the submission is not entitled to any
consideration.
ISSUES
The following issues are before us:
1. Whether an interference-in-fact does not exist, as urged
by the party Galimberti et al.
2. Whether the Galimberti et al. specification does not
contain a written description within the meaning of 35 U.S.C.
§ 112, first paragraph, for its claims 1 and 2, as urged by
the party Okamoto et al.
3. Whether the Galimberti et al. motion (Paper No. 72) to
suppress should be granted.
4. Whether the Asanuma et al. motion (1) to suppress should
be granted.
5. Whether the Asanuma et al. motion (2) to suppress should
be granted.
Interference No. 103,303
The objection raised here would also be applicable to4
the testimony of Dr. Galimberti who testified about analyses
performed by other persons who were not called to testify.
See pages 6 and 7 of the opposition.
-7-
Before considering issues (1) and (2), we must first
consider the motions to suppress since they affect the
evidence to be considered by us.
The Galimberti et al. motion to suppress seeks to
suppress each of the Asanuma six declarations, including the
translator's declaration, and the testimony of Dr. Asanuma on
the grounds of hearsay and lack of foundation. The motion
contends that Dr. Asanuma's testimony concerning the repeats
of Asanuma Example 3 shows a lack of personal knowledge
concerning the experimental work, because the experimental
work was done out by Messrs. Ishii and Sunaga, who were not
called to testify. The motion is denied for the reasons set4
forth in Asanuma et al.'s opposition (Paper No. 74).
We agree with the party Asanuma et al. that Dr. Asanuma's
testimony is that of an expert witness and is admissible under
Fed. R. Evid. 702. Moreover, the underlying facts presented
by Dr. Asanuma are admissible in this interference under the
rule of reason, since Dr. Asanuma is the supervisor of Messrs.
Interference No. 103,303
-8-
Ishii and Sunaga. See Holmwood v. Sugavanam, 948 F.2d 1236,
1238-39,
20 USPQ2d 1712, 1714 (Fed. Cir. 1991). In Holmwood, the court
stated that it cannot ignore the realities of technical
operations in modern day research laboratories, finding that
the testimony of a junior technician performing perfunctory
tasks under the supervision of a senior scientist is not
generally necessary to verify the reliability of evidence
about scientific methods or data, where there is an absence of
evidence to call into question the trustworthiness of the
senior scientist's testimony. Here, we have no evidence to
question the trustworthiness of the testimony of Dr. Asanuma,
the senior scientist supervisor of Messrs. Ishii and Sunaga.
The Asanuma motions to suppress are denied. The motions
urge that certain evidence (testimony and exhibits) relied
upon by the party Galimberti et al. are not relevant to the
issues to be considered at final hearing. The motions do not
point out where that evidence is relied upon by the party
Galimberti et al.'s opening brief. In any event, we are of
the view that the evidence, in toto, should not be suppressed,
but rather should remain in the case and be subject to
Interference No. 103,303
-9-
evaluation as to what weight the evidence, if it is relied
upon by us, should be accorded.
INTERFERENCE-IN-FACT
We hold that an interference-in-fact exists.
The interference having been declared under 35 U.S.C.
§ 135(a), it is presumed that an interference-in-fact exists
and that each party's claims designated as corresponding to a
count define the same patentable invention as the count. An
"interference-in-fact" exists when at least one claim of a
party that is designated to correspond to a count and at least
one claim of an opponent that is designated to correspond to
the count define the same patentable invention. 37 CFR
§ 1.601(j).
The party filing a preliminary motion urging that an
interference-in-fact does not exist has the burden of proof on
the motion. Kubota v. Shiyuba, 999 F.2d 517, 27 USPQ2d 1418
(Fed. Cir. 1993). The party must show that its claims
corresponding to the count are directed to a separate
patentable invention from each of its opponent's claims
designated in the notice as corresponding to the count. Hsing
v. Myers, 2 USPQ2d 1861 (Bd. Pat. App. & Int. 1987).
Interference No. 103,303
-10-
The test for interference-in-fact is set forth in 37 CFR
§ 1.601(n), which provides that an invention "A" is a separate
patentable invention with respect to invention "B" when
invention "A" is new (35 U.S.C. § 102) and non-obvious (35
U.S.C. § 103) in view of invention "B," assuming invention "B"
is prior art with respect to invention "A." Since the
interference contains two counts, we will address the
respective claims corresponding to each count.
Interference-in-fact as to Count 1
We now turn to the question of whether an interference-
in-fact exists as to count 1, i.e., is Galimberti et al.'s
claim 1 new and nonobvious over Asanuma et al.'s claim 9 or
11, assuming that Asanuma et al.'s claims are prior art with
respect to Galimberti et al.'s claim 1.
Galimberti et al.'s claim 1 reads as follows:
1. Crystalline copolymers of propylene and 1-butene with
an essentially syndiotactic structure, containing from 1.3 to
10 mole % of 1-butene units, having a melting point from 110E
to 140EC., a fraction soluble in xylene at 25EC. less than 10%
by weight, and a composition similar to the mixture of the
monomers present in the gas phase during preparation of said
polymer, wherein the difference between the amount of
comonomer present in the gas phase and the amount of comonomer
in said composition is between 13% to 23% less in the
composition of said copolymer.
Interference No. 103,303
-11-
Asanuma et al.'s claims 9 and 11 depend from claim 8.
These claims read as follows:
8. A syndiotactic propylene copolymer comprising 70 to
99 mole % of propylene and 1 to 30 mole % of an olefin other
than propylene wherein in the C-NMR spectrum of said13
syndiotactic propylene copolymer, said copolymer exhibits a
ratio of the intensity of a peak at about 20.2 ppm to the sum
of the intensities of the total peaks attributable to methyl
groups in propylene units at about 19-22 ppm of 0.3 or more.
9. A syndiotactic propylene copolymer according to Claim
8, wherein said olefin other than propylene is an "-olefin
having 2 or 4 to 25 carbon atoms.
11. A syndiotactic propylene copolymer according to Claim
9, comprising 76 to 99 mole% of propylene and 1 to 24 mole% of
butene wherein in the C-NMR spectrum of said syndiotactic13
propylene copolymer, said copolymer exhibits a ratio of the
intensity of a peak at about 20.2 ppm to the sum of the
intensities of the total peaks attributable to methyl groups in
propylene units at about 19-22 of 0.5 or more.
Galimberti et al.'s claim 1 is directed to crystalline
syndiotactic copolymers of propylene and 1-butene containing 1.3
to 10 mole % of 1-butene units. Asanuma et al.'s claim 11 is
directed to a syndiotactic copolymer comprising 76 to 99 mole %
of propylene and 1 to 24 mole % of butene. The following table
compares the syndiotactic propylene butene copolymers of the
parties.
Galimberti's Claim 1 Asanuma et al.'s claim 11
Interference No. 103,303
According to paragraph 6 of the declaration of Dr.5
Maurizio Galimberti (GX 1), "the measure of xylene solubles is
a rough evaluation of the cristallinity [SIC] of the polymer
[propylene/1-butene]. The lower is the xylene soluble
fraction, the higher is the cristalline [SIC] degree of the
polymer."
-12-
Crystalline copolymers of A syndiotactic propylene 5
propylene and 1-butene with an copolymer comprising propylene
essentially syndiotactic and butene
structure
1.3 to 10 mole% of 1-butene 1 to 24 mole % of butene
melting point from 110E to --------
140EC
a fraction soluble in xylene --------
less than 10% by weight
composition similar to the ----------
mixture of the monomers present
in the gas phase during the
preparation of said monomers
------- wherein in the C-NMR13
spectrum of said syndiotactic
propylene copolymer,
said copolymer exhibits a
ratio of the intensity of a
peak at about 20.2 ppm to the
sum of the intensities of
the total peaks attributable
to methyl groups in propylene
units at about
19-22 of 0.5 or more.
Assuming that the copolymer of Asanuma et al.'s claim 11
is prior art to Galimberti et al.'s claim 1, we agree with the
APJ in charge of this interference that the party Galimberti
Interference No. 103,303
-13-
et al.'s copolymer would have been anticipated or rendered
obvious by the copolymer of Asanuma et al. Both copolymers
contain identical components (monomers) in overlapping ranges.
It is settled that where the prior art describes a composition
which reasonably appears to be identical or substantially the
same as the claimed composition, the subject matter claimed is
prima facie unpatentable under 35 U.S.C. §§ 102 and/or 103.
In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985)(The patentability of a product does not depend upon its
method of manufacture and if the product in a product-by-
process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior
product was made by a different process). In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990)("The
discovery of a new property or use of a previously known
composition, even when that property and use are unobvious
from the prior art, cannot impart patentability to claims to
the known composition.")
The burden is upon the party Galimberti et al. to
demonstrate that the copolymers of its claim 1 are not only
Interference No. 103,303
-14-
different but patentably distinct from the copolymers embraced
by the party Asanuma et al.'s claims 9 and 11.
In its brief, the party Galimberti et al. argues that
example 3 of Asanuma et al.'s application does not contain
sufficient detail concerning the production of a copolymer
within the scope of Asanuma et al.'s claim 11. The fact that
example 3 may not contain sufficient detail to satisfy the
party Galimberti et al. is not considered relevant to the
issue of interference-in-fact, since the Asanuma et al.
application disclosure is presumed to comply with the
provisions of 35 U.S.C. § 112, first paragraph, with respect
to enablement and written description, especially where the
party Galimberti et al. filed no preliminary motion for
judgment attacking the sufficiency of the application
disclosure. Moreover, it is well settled that a patent does
not have to be as detailed as a set of production
specifications in order to meet the enablement requirements of
35 U.S.C. § 112. Trio Process Corp. v. L. Goldstein's Sons,
Inc., 461 F.2d 66, 74, 174 USPQ 129, 134 (3d Cir.) cert.
denied, 409 U.S. 997,
175 USPQ 577 (1972). Likewise, the arguments raised by the
party Galimberti et al. concerning the inherency of example 3
Interference No. 103,303
-15-
and lack of other examples in the Asanuma et al. application
showing copolymers having butene units less than 11.8 mole %
are not relevant to the consideration of the question of no
interference-in-fact. As we noted above, the test for no
interference-in-fact is a showing that the party Galimberti et
al.'s claim 1 is patentably distinct from the party Asanuma et
al.'s claims 9
and 11.
The party Galimberti et al. has not alleged any
criticality in the range of 1.3 to 10 mole % for its 1-butene
monomer vis-à-vis the range of 1 to 24 mole % recited in the
party Asanuma et al.'s claim 11 for its butene monomer. Nor
has the party Galimberti et al. alleged any criticality in its
copolymer having a fraction soluble in xylene less than 10% by
weight. Rather, the party Galimberti et al. argues three
differences between its claim 1 and claims 9 and 11 of the
party Asanuma et al. These differences are (1) the Galimberti
et al.'s copolymers are homogenous whereas the Asanuma
copolymers are not, (2) the Galimberti et al. copolymers have
a fraction soluble in xylene less than 10% by weight whereas
the Asanuma copolymers do not, and (3) the Galimberti et al.
copolymers are made by a different process than the Asanuma
Interference No. 103,303
-16-
copolymers. These are the only arguments by the party
Galimberti et al. to predicate the separate patentability of
its claims. These arguments are addressed seriatim below.
I
With respect to the homogeneous argument, we note that
homogeneous is not a limitation recited in the party
Galimberti et al.'s claim 1. It is settled that a claim is to
be given its broadest reasonable interpretation and that a
limitation from specification is not to be read into the
claim. In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057,
1059 (Fed. Cir. 1993); Intervet America, Inc. v. Kee-Vet Lab.
Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed. Cir.
1989). The reason for the rule is simply that during patent
prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and
clarification imposed. In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). The foregoing rule of
claim construction applies to patent claims which correspond
to the count. Lamont v. Berguer, 7 USPQ2d 1580, 1582 (Bd.
Pat. App. & Int. 1988). Since Galimberti et al.'s claim 1
does not recite that the copolymer is homogeneous, we will not
read the limitation into the claim.
Interference No. 103,303
-17-
We note that the Galimberti et al. specification, column
1, lines 64 to 68, states that by operating the process for
preparing the copolymers, one obtains copolymers with a
homogeneous comonomer distribution. However, the degree of
homogeneity is not defined in the specification, nor has the
party Galimberti et al. referred us to any portion of its
record to show the degree of homogeneity of its copolymers.
Even if we were to read homogeneous into claim 1, as requested
by the party Galimberti et al, we would necessarily read the
claim as if the copolymer were 100% homogeneous. This,
clearly, is not the case since the copolymer, which is
syndiotactic, may have a rrrr pentad content greater than 85%.
See column 1, line 68 to column 2, line 2. Thus even if we
were to read the homogeneous limitation into the claim, which
we cannot, the copolymer would not appear to be entirely
homogeneous, because of the definition of syndiotactic in the
patent specification. Nowhere is the degree of
syndiotacticity correlated with any degree of homogeneousness.
II
With respect to the Galimberti et al. copolymers having
a fraction soluble in xylene less than 10% by weight, we are
not persuaded that the Asanuma et al. copolymers do not
Interference No. 103,303
-18-
possess the requisite solubility. In support of its position
that the Asanuma et al. copolymers do not possess the
requisite solubility, the party Galimberti et al. allegedly
replicated example 3 of Asanuma et al.'s application and found
that the copolymer produced therein, albeit having a
composition within the scope of Galimberti's claim, possessed
a xylene solubility
of 59%.
We agree with the party Asanuma et al. that the party
Galimberti et al did not fairly replicate the example within
the teachings of the application.
Example 3 reads, in part, as follows:
In a 2-liter autoclave, the same amount of the
same catalyst as in Example 1 was dissolved in 1
liter of toluene, and propylene was placed therein
at 30EC until a level of 5 kg/cm G had been reached. 2
After-ward, 45 g of butene-1 was injected thereinto
at the same temperature, and polymerization reaction
was carried out at 30EC for 2 hours, while propylene
was added thereto so that the polymerization
pressure might always be 5 kg/cm G. After the2
unpolymerized monomers had been purged, the
autoclave was opened, and the contents thereof were
filtered, washed with toluene (1 liter, 5 times)
and dried in the same manner as in Example 1,
thereby obtaining 64.3 g of a powdery copolymer.
The example states that the catalyst was dissolved in 1
liter of toluene, and propylene was placed therein and
"[a]fterward, 45 g of butene-1 was injected thereto. . . ."
Interference No. 103,303
-19-
(Emphasis added). We agree with the party Asanuma et al. that
injecting means adding the butene as quickly as possible to
the reaction mixture. The party Galimberti et al. did not add
butene-1 as quickly as possible but rather added the butene-1
over a period of 20 minutes. We are persuaded that the party
Asanuma et al.'s interpretation of injecting is a reasonable
one, especially since Dr. Galimberti testified at GR 35 and 36
that in the examples of his patent methanol was injected into
the reaction mixture to stop the reaction and that the term
injected in the context of his patent means to inject methanol
as a liquid in the shortest possible time.
Moreover, we note that party Asanuma et al.'s claim 11
positively recites a particular range for its C-NMR spectrum. 13
The Asanuma et al. application teaches at page 7, lines 17 to
20 and 29, that if the produced copolymer does not meet the
requirements for C-NMR spectrum, the copolymer must be washed13
with a solvent, such as xylene. The evidence of the party
Galimberti et al. does not address this limitation, i.e., show
that any copolymer which does not meet the requirements of
C-NMR spectrum but which meets those requirements after13
washing, would not have a xylene solubility less than 10%.
III
Interference No. 103,303
-20-
We do not agree with the party Galimberti et al. that its
claimed copolymers are made by a different process than the
party Asanuma et al.'s polymers for the reasons set forth in
our discussion with respect to count 2, infra.
For the foregoing reasons, we hold that the party
Galimberti et al. has not sustained its burden of proof with
respect to count 1.
Interference-in-fact as to Count 2
We now turn to the question of whether an interference-
in-fact exists as to count 2, i.e., is Galimberti et al.'s
claim 2 new and nonobvious over Asanuma et al.'s claim 16,
assuming that Asanuma et al.'s claim 16 is prior art with
respect to Galimberti et al.'s claim 2.
Galimberti et al.'s claim 2 reads as follows:
2. A process for the preparation of the copolymers of
claim 1 comprising the polymerization of gaseous mixtures of
propylene and 1-butene with catalysts obtained from isopropyl
(cyclopentadienyl-1-fluorenyl) hafninum or zirconium
dichloride and polymethylaluminoxane cyclic or linear
compounds of the formula
(A1-O)n
*
CH 3
where n is a number from 2 to 25 and
CH )(A1)O) A1(CH )3 n 3 2
*
CH 3
Interference No. 103,303
-21-
wherein n is a number from 1 to 25, operating under conditions
where the 1-butene molar content present in the gas mixture
being continuously fed is from 1.5 to 10%, and the
polymerization is conducted in the liquid phase, at a
temperature of from -30E to 70EC.
Asanuma et al.'s claim 16 reads as follows:
16. A process for the preparation of the copolymers of
claim 11 comprising the polymerization of propylene and butene
with catalysts obtained from isopropyl (cyclopentadienyl-1-
fluorenyl) hafnium dichloride or isopropyl (cyclopentadienyl-
1-fluorenyl) zirconium dichloride and polymethylaluminoxane
cyclic or linear compounds of the formula
CH 3
â„¢
CH )(A1)O) )A13 n
* (
CH CH 3 3
or
+)))))))),
.)(A10) ) -n
*
CH

Interference No. 103,303
-22-
where n is at least 5, operating under conditions where the
ratio of butene to the total constitutional monomer units of
the copolymer is from 1 to 24 mole %, and the polymerization
is conducted in the liquid phase, at a temperature of from -
100EC to 100EC.
Galimberti et al.'s claim 2 is directed to a process for
the preparation of copolymers of propylene and 1-butene
comprising the polymerization of gaseous mixtures of propylene
and 1-butene with a hafnium or zirconium dichloride catalyst
wherein the 1-butene molar content in the gas mixture being
continuously fed is from 1.5 to 10% and the polymerization is
conducted in the liquid phase at a temperature of from -30E to
70EC.
Asanuma et al.'s claim 16 is directed to a process for
the preparation of copolymers of propylene and butene
comprising the polymerization of propylene and 1-butene with
the same hafnium or zirconium dichloride catalyst as claimed
by Galimberti et al. wherein the ratio of butene to the total
constitutional monomer units of the copolymer is 1 to 24 mole
% and the polymerization is conducted in the liquid phase at a
temperature of from -100E to 100EC.
On page 15 of its main brief, the party Galimberti et al.
states:
Interference No. 103,303
-23-
As regards Count 2, one skilled in the art
reading Asanuma claim 16 would look to Example 3 for
guidance in preparing propylene/1-butene copolymers
having a low mole percent butene. But Example 3 is
not "specific." It omits many necessary details
that one skilled [in the] art would need to know in
order to truly and reproducibly repeat it. Because
of these omissions, one skilled in the art would
have to make a number of reasonable assumptions in
order to even try to "repeat" the example. Dr.
Galimberti made reasonable assumptions, and the
copolymer he obtained showed a xylene solubility of
59%. (Galimberti patent claim 1 requires a xylene
solubility of less than 10%.)
On pages 31 and 32 of its main brief, the party
Galimberti

et al. states:
As previously demonstrated, the Asanuma appli-
cation does not establish that it "possessed" the
Galimberti copolymers. The same is true as regards
the Galimberti process as set out in Galimberti
patent claim 2. Asanuma has admitted the processes
are different. [Citation omitted.] Interestingly,
Asanuma made no attempt to oppose Galimberti's EPO
counterpart patent (GR 147.)
The Asanuma application process does not provide
a continuous feed of a gaseous mixture of reactants,
as called for in Galimberti claim 2. [Citation
omitted.] The Asanuma process does not maintain the
composition of a gaseous mixture of reactants at a
constant ratio, as called for in Galimberti claim 2.
[Citation omitted.] There is no possibility that a
constant ratio could be achieved by Asanuma because
its examples disclose the feeding of comonomer only
at the state of the reaction. [Citation omitted.]
The process allegedly adopted in the Asanuma
repeats of application Example 3 is intricate,
complex, and most significantly, is in no way
Interference No. 103,303
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disclosed or suggested by Example 3 as written.
Unless a person skilled in the art set out with a
preconceived agenda--to seize upon whatever
procedure was necessary to obtain a copolymer
falling within the Galimberti patent claims--that
person would never repeat Asanuma application
Example 3 in the particular manner and technique
that Dr. Asanuma testified was adopted. There is
nothing in the example that describes that
Interference No. 103,303
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particular manner and technique. The Asanuma
process as set out in Example 3 is not specific and
hence is unrepeatable and unreproducible--too many
essential details are missing. The specific process
actually adopted by Asanuma for the "repeats" of
Example 3 is utterly unsupported by the text of that
Example. Thus, the Asanuma application altogether
fails to disclose or suggest the Galimberti process
as set out in Galimberti patent claim 2.
The following table compares the processes of the
parties.
Galimberti et al.'s Claim 2 Asanuma et al.'s claim 16
A process for the preparation A process for the
preparation
of the copolymers of claim 1 of the copolymers of claim 1
comprising comprising
polymerization of gaseous polymerization of
mixture of propylene and propylene and butene
1-butene
with catalysts obtained from with catalysts obtained from
isopropyl (cyclopentadienyl-1 isopropyl (cyclopentadienyl-
1
fluorenyl) hafnium or fluorenyl) hafnium or
zirconium dichloride zirconium dichloride
where the 1-butene molar ---------
content in the gas mixture
being continuously fed is
from 1.5 to 10%
the polymerization is the polymerization is
conducted in the liquid phase conducted in the liquid
phase
at a temperature from -30E to at a temperature from -100E
to
70EC. 100EC.
Interference No. 103,303
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It is evident from the table that both processes produce
copolymers having identical components (monomers) in over-
lapping ranges; both use the same catalyst; both conduct the
Interference No. 103,303
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polymerization in the liquid phase; and both conduct the
polymerization in overlapping temperature ranges.
Asanuma et al.'s claim 16 differs in two respects from
Galimberti et al.'s claim 2. Claim 16 does not recite whether
the reactants are either gaseous or liquid. Consequently,
claim 16 embraces both gaseous and liquid reactants. Claim 16
does not recite continuously feeding the reactants, but rather
recites polymerizing the reactants. Consequently, claim 16
embraces both batch and continuous processes.
The burden is upon the party Galimberti et al. to show
that the process of its claim 2 is patentably distinct from
that of Asanuma et al.'s claim 16. In our view, the party
Galimberti et al. has not sustained its burden, because the
party Galimberti et al. has not shown that the differences
would render its claim 2 patentably distinct from Asanuma et
al.'s claim 16.
To the extent that the party Galimberti urges that its
process maintains the gaseous mixture at a constant ratio, the
argument fails because constant ratio is not a limitation
recited in claim 2. Claim 2 merely recites a range for the 1-
butene content in the gas mixture. In no way would this range
constitute a constant ratio.
Interference No. 103,303
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To the extent that the party Galimberti et al. argues the
lack of detail in Example 3 of Asanuma et al.'s specification,
the argument is not considered relevant, since the Asanuma et
al. application disclosure is presumed to comply with the
provisions of 35 U.S.C. § 112, first paragraph, with respect
to enablement and written description, especially where the
party Galimberti et al. filed no preliminary motion attacking
the sufficiency of the disclosure. As we noted above, it is
settled that a patent does not have to be as detailed as a set
of production specifications to meet the enablement
requirements of 35 U.S.C. § 112. Trio Process Corp. v. L.
Goldstein's Sons, Inc., 461 F.2d at 74, 174 USPQ at 134.
For the foregoing reasons, we hold that the party
Galimberti et al. has not sustained its burden to show that an
interference-in-fact does not exist.
WRITTEN DESCRIPTION
Since we have held that an interference-in-fact exists,
it is not necessary for us to determine whether the party
Galimberti et al.'s specification contains a written
description for the limitation "the difference between the
amount of comonomer present in the gas phase and the amount of
comonomer in said composition is between 13% to 23% less in
Interference No. 103,303
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the composition of said copolymer" which is recited in claims
1 and 2. Since these claims are not patentable to the party
Galimberti et al. since it lost the priority contest, the
question of the patentability of these claims under 35 U.S.C.
§ 112, first paragraph, is moot. However, for the sake of
completeness, we will review the matter.
The range between 13% to 23%, recited in claim 1, and
dependent claim 2, is not described haec verba in the
Galimberti et al. specification. It is not disputed by the
party Asanuma et al. that the party Galimberti et al.'s
repeats of its examples 1 and 2, respectively, showed two
points, 13.33% and 23.33%. The party Galimberti et al.
rounded these two points to 13% and 23% and added the
limitation in question as a range "between 13 to 23%" to its
claim 1.
We agree with the party Asanuma et al. that the
Galimberti et al. patent specification does not contain a
written description for the range "between 13 to 23%." The
recited range does not include the endpoints, 13% and 23%,
because the term "between" means that the values must be
intermediate to the endpoints.
Interference No. 103,303
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For the foregoing reasons, we hold that the party
Galimberti et al.'s specification does not contain a written
description for its claims 1 and 2.
Interference No. 103,303
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JUDGMENT
Judgment with respect to the subject matter of the count
in issue is hereby awarded to Tadashi Asanuma, Tetsunosuke
Shiomura, Nobutaka Uchikawa, Tateyo Sasaki, Osamu Uchida,
Tutomu Iwatani,
Shigeru Kimura and Takeo Inoue, the senior party.
Accordingly, on the present record, Galimberti et al. are not
entitled to a patent containing claims 1 and 2, and Asanuma et
al. are entitled to a patent containing claims 9, 11 and 16.
____________________________)
RONALD H. SMITH )
Administrative Patent Judge )
)
)
)
____________________________)
MICHAEL SOFOCLEOUS ) BOARD OF
PATENT Administrative Patent Judge )
APPEALS AND
) INTERFERENCES
)
)
____________________________)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
)
Interference No. 103,303
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Attorneys for Galimberti et al.:
Maurice B. Stiefel et al.
Bryan Cave
245 Park Ave., 40th Floor
New York, NY 10167-0034
Attorneys for Asanuma et al.:
Robert G. Mukai
Burns, Doane, Swecker & Mathis
P.O. Box 1404
Alexandria, VA 22313-1404