Ex Parte Bennett et al

Patent Trial and Appeal Board

Mar 15, 2016

13016165 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/016,165 01/28/2011 ALISON MARGARET ANNE BENNETT
23906 7590 03/17/2016
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ATTORNEY DOCKET NO. CONFIRMATION NO.
CL1236USDIV1 4042
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
03/17/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALISON MARGARET ANNE BENNETT,
EDWARD BRYAN COUGHLIN, JOEL DAVID CITRON,
andLINWANC
Appeal2014-005734
Application 13/016,165
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5, 26, 27, and 35--42. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants' appealed invention is illustrated by independent claim 1,
reproduced below:
Appeal2014-005734
Application 13/016,165
1. A process for the polymerization of olefins,
comprising, contacting under polymerizing conditions:
(a) a first active polymerization catalyst for said
olefins which is a Fe or Co complex of a ligand of the formula:
(I)
wherein:
R1, R2 and R3 are each independently hydrogen,
hydrocarbyl, substituted hydrocarbyl, or an inert functional
group;
R4 and R5 are each independently hydrogen, hydrocarbyl,
an inert functional group or substituted hydrocarbyl;
R6 and R7 are aryl or substituted aryl; and
provided that a polymer produced by said first active
polymerization catalyst has a degree of polymerization of about
40 or more;
(b) a second active polymerization catalyst for said
olefins which contains one or more transition metals;
( c) at least one first olefin capable of being
polymerized by said first active polymerization catalyst; and
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Application 13/016,165
(d) at least one second olefin capable of being
polymerized by said second active polymerization catalyst,
and provided that said polymerization with said first
active polymerization catalyst and said polymerization with
said second polymerization catalyst are carried out
simultaneously.
Appellants request review of the Examiner's rejection of claims 1-5,
7, 26, 27, and 35--42 under 35 U.S.C. § 103(a) as unpatentable over
Brookhart, III et al. (US 6,103,946, issued August 15, 2000) (hereinafter
"Brookhart") and Stehling et al. (US 5,382,631, issued January 17, 1995)
(hereinafter "Stehling"). Final Act. 3; App. Br. 7.
OPINION1
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's prior art rejection for the
reasons presented by Appellants. We add the following.
Independent claims 1 and 35 are directed to a polymerization process
using first and second active polymerization catalysts for producing a blend
of polyolefins, where the first active polymerization catalyst has a degree of
polymerization of about 40 or more. App. Br. 5.
With respect to the independent claims, the Examiner found
Brookhart discloses a process of using first and second catalysts to make
polyolefins where the process differ from the claimed invention in that
Brookhart does not teach that the first catalyst has a degree of
1 We limit our discussion to independent claims 1 and 35.
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Appeal2014-005734
Application 13/016,165
polymerization of about 40 or more. 2 Final Act. 3; Brookhart Abstract, col.
1, 1. 10-col. 2, 1. 65, col. 16, 11. 8-31. The Examiner determined the degree
of polymerization is dependent on a number of processing factors in addition
to the catalyst used, including reaction temperature and pressure, catalyst
concentration and polymerization process used. Final Act. 3--4. The
Examiner found it would have been obvious to modify these factors to arrive
to the claimed degree of polymerization absent any evidence of criticality or
unexpected results. Id. at 4.
Appellants argue the catalysts of Brookhart do not produce polymers
having a degree of polymerization of 40 or more as required by the subject
matter of independent claims 1 and 35. App. Br. 10. Appellants argue
Brookhart highest degree of polymerization is 7. 7, based on a disclosed
Schulz-Flory constant of 0.87. App. Br. 10; Brookhart col. 21-22 (Table 1,
Example 19). According to Appellants, a Schulz-Flory constant of 0.98 or
greater is required for a degree of polymerization of 40 or more. App. Br.
10. Appellants further argue, contrary to the Examiner's findings, that
varying temperature and pressure process conditions has very little effect on
the degree of polymerization for a given catalyst. Id. In support of their
assertion, Appellants rely on the article by Small3 disclosing data on catalyst
1 showing a small variation in the Schulz-Flory constants ranging from 0.70
2 A discussion of Stehling is unnecessary for disposition of this appeal. The
Examiner relied upon this reference for features not related to the degree of
polymerization. Final Act. 5.
3 Brooke L. Small & Maurice Brookhart, Iron-Based Catalysts with
Exceptionally High Activities and Selectivities for Oligomerization of
Ethylene to Linear a-Olefins, 120 J. AM. CHEM. Soc. 7143-7144 (1998)
(hereinafter "Small").
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Appeal2014-005734
Application 13/016,165
to 0.81 (corresponding to a degrees of polymerization of 3.3 to 5.3) despite
varying many process conditions. App. Br. 1 O; Small 7143 (Table 1 ).
We agree with Appellants that the Examiner has not established a
prima facie case of obviousness. While the Examiner determined the degree
of polymerization is dependent on a number of factors, the Examiner has not
presented an adequate technical explanation to support the determination
that one skilled in the art would expect Brookhart's first catalyst to result in
a polymer having a degree of polymerization of 40 or more by adjusting
those factors. Final Act. 3--4. The Examiner has not adequately explained
that Brookhart's polymerization step with the first catalyst would necessarily
form a polymer having the claimed degree of polymerization by varying the
various factors listed by the Examiner. Id. Further, the Examiner has not
adequately refuted Appellants' assertion that varying process conditions,
such as temperature and pressure, for a given catalyst has very little effect on
the degree of polymerization. App. Br. 10; Small 7143.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Accordingly, we reverse the Examiner's prior art rejection under
35 U.S.C. § 103(a).
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Appeal2014-005734
Application 13/016,165
ORDER
The Examiner's prior art rejection under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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