Ex Parte Devisme et al

Patent Trial and Appeal Board

Nov 2, 2016

13131347 (P.T.A.B. Nov. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/131,347 08/30/2011
21839 7590 11/04/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Samuel Devisme
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0078840-000032 5151
EXAMINER
KAUCHER, MARKS
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
11/04/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SAMUEL DEVISME, FABRICE R. CHOP,
JEAN-LAURENT PRADEL, GUILLAUME LE,
THOMAS ROUSSEL, and JEAN-LUC DUBOIS 1
Appeal2015-000268
Application 13/131,347
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify the real party in interest as ARKEMA FRANCE.
Appeal Br. 2.
2 In our opinion below, we reference the English language Specification
filed May 26, 2011 (Spec.), Final Office Action mailed December 2, 2013
(Final), the Appeal Brief filed April 25, 2014 (Appeal Br.), the Examiner's
Answer mailed August 19, 2014 (Ans.), and the Reply Brief filed September
30, 2014 (Reply Br.).
Appeal2015-000268
Application 13/131,347
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1--4, 16, 17, and 20-31. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and ENTER ANEW GROUND OF
REJECTION.
The claims are directed to a grafted propylene polymer in which
greater than 20% by weight of the carbon of the polymer originates from
renewable raw materials as measured by standard ASTM D 6866-6. See,
e.g., claim 1. According to the Specification, "[a] renewable raw material is
a natural resource, for example, animal or plant, the stock of which can be
reformed over a short period on the human scale." Spec. 5:12-14. ASTM D
6866-06 sets forth test methods for carbon dating that can identify whether
the carbon originates from renewable raw material or from fossil raw
materials (oil) based on the amount of carbon-14 in a sample. Spec. 5:22-
7:3. Claim 1 is illustrative:
1. A propylene polymer grafted by at least one grafting
monomer selected from the group consisting of unsaturated carboxylic
acids, functional derivatives of unsaturated carboxylic acids,
unsaturated dicarboxylic acids having 4 to 10 carbon atoms,
functional derivatives of unsaturated dicarboxylic acids having 4 to 10
carbon atoms, C1-Cs alkyl esters of unsaturated carboxylic acids,
glycidyl ester derivatives of unsaturated carboxylic acids, metal salts
of unsaturated carboxylic acids, and mixtures thereof,
wherein the propylene polymer comprises an amount of carbon
resulting from renewable raw materials of greater than 20% by weight
relative to the total weight of carbon of the propylene polymer, the
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Application 13/131,347
amount of carbon resulting from renewable raw materials being
measured according to the standard ASTM D 6866-06.
Appeal Br. Claims Appendix 1.
The Examiner maintains the following rejections:
A. claims 1--4, 16, 17, 20, 21, and 28 under 35 U.S.C. § 103(a) as
obvious over Hwang3 in view ofBraskem;4 and
B. claims 22-27, and 29-31 over Hwang in view of Braskem, and
further in view of Tian. 5
OPINION
Rejection A: claims 1--4, 16, 17, 20, 21, and 28
At the outset, we note that Appellants do not argue any claim
separately from the others when addressing the Examiner's rejection of
claims 1--4, 16, 17, 20, 21, and 28 as obvious over Hwang in view of
Braskem. Appeal Br. 5-8. We select claim 1 as representative for deciding
the issue on appeal. The issue is: Have Appellants identified a reversible
error in the Examiner's finding that those of ordinary skill in the art would
have had a reasonable expectation of success when using known processes
of grafting as taught by Hwang to graft Braskem's propylene polymer?
For the reasons discussed in the Answer, Appellants have not
persuaded us of such a reversible error. We add the following primarily for
emphasis.
The Examiner finds that Hwang discloses grafting propylene
polymers with a grafting monomer such as maleic anhydride, one of the
3 Hwang et al., US 5,424,362, issued June 13, 1995.
4 Braskem, WO 2008/067627 A2, published June 12, 2008.
5 Tian et al., US 2003/0236365 Al, published Dec. 25, 2003.
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Application 13/131,347
compounds within the scope of the grafting monomers of claim 1. Final 3.
The Examiner finds that Hwang is silent as to the origin of the
polypropylene. Id. Hwang describes grafting by, for instance, introducing
the polymer to be grafted into a two-roll mixer, mixing at elevated
temperature, adding the grafting monomer (unsaturated organic compound)
and optionally initiator, and mixing until grafting is completed. Hwang, col.
4, 1. 40-col. 5, 1. 3.
Appellants contend that Hwang relates to the grafting of non-
renewable (fossil-derived) polypropylene with commonplace methods.
Appeal Br. 7, citing Hwang, col. 4, 1. 58 to col. 5, 1. 14; col. 7, 11. 39--47.
Appellants have not persuaded us that the Examiner is incorrect in finding
that Hwang is silent regarding the origin of the polypropylene. The portions
of Hwang cited by Appellants do not definitively state that the
polypropylene originates from non-renewable, fossil-derived, raw materials.
Instead, Hwang's disclosure spanning columns 4 and 5 refers to known
techniques of grafting, and the column 7 disclosure refers to methods of
fabricating articles by molding the resultant polymer. Hwang, col. 4, 1. 58 to
col. 5, 1. 14; col. 7, 11. 39--47. Neither disclosure discusses the origin of the
raw material used to form the polypropylene. That being said, we
acknowledge that it was common practice in the art to select a propylene
derived from fossil feedstock for the polymerization. As discussed in
Appellants' Specification, polypropylene was customarily made from non-
renewable raw materials by catalytic or thermal cracking of oil fractions.
Spec. 1 :35-36.
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Application 13/131,347
There is no dispute that, as found by the Examiner, Braskem teaches
polypropylene produced from propylene of renewable plant-based origin.
Compare Final 3 with Appeal Br. 7.
As pointed out by Appellants, Braskem teaches using a gasification
reaction of lignocellulosic materials and/or other organic products to
produce olefins. Appeal Br. 7; Braskem 1: 5-16. Specifically, Braskem
teaches using the gasification process to produce propylene, and optionally,
other olefins such as ethylene and butylene. Braskem 1:5-16. Figure 1 of
Braskem depicts a block diagram of an integrated method for producing the
olefins ethylene and propylene from sugarcane. Braskem 12: 19-21. In the
embodiment shown in Figure 1, the sugarcane sugars are fermented to obtain
ethanol, which is used to produce ethylene, and in a separate stream, excess
bagasse and straw are pyrolyzed, gasified, and the resulting synthesis gas
further processed and used to produce methanol. Braskem 24: 10-17; 33:6-
15; Fig. 1. The methanol is used to produce propylene directly, or indirectly
from the intermediate dimethyl ether, using known technologies. Braskem
24:14--17.
According to Braskem, "[d]epending on the process conditions
(temperature, recycles) and the catalyst used, the propylene may be obtained
with high purity and high yield or may generate ethylene and butylene as co-
products." Braskem 24:19-25:5 (emphasis added). One can control the
propylene to ethylene ratio to obtain either "almost pure propylene" or to
obtain a ratio of ethylene to propylene. Id. Small amounts of butylene in
relation to those two monomers may also be obtained, and there are
produced, as additional by-products, streams with characteristics similar to
those of fossil fuels (natural gas, liquefied petroleum gas (LPG), and
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Application 13/131,347
gasoline). Id. "The hydrocarbons thus produced are separated by distillation
into the various streams of interest." Id.
Braskem further discloses using multiple reactors, recycle streams,
and distillation steps to convert the methanol and/or dimethyl ether into
propylene. Braskem 25:7-23. To obtain high levels of conversion into
propylene, Braskem counsels using aluminosilicate-based zeolites of the
Pentasil type as described in EP 448000. Id. According to Braskem,
propylene generated from lignocellulosic materials can be used for the
production of polypropylene and its copolymers. Id. at 27:12-19.
Braskem's Example 1 uses the catalyst and technology described in EP
448000, and upon distillation recovers 30 tons of polymer-grade propylene,
8 tons of gasoline, 3 tons of LPG, and 52 tons of water. Braskem 33: 17-23.
An additional 14 tons of propylene was generated by reacting carbon dioxide
from the fermentation of the juice from the sugarcane with hydrogen.
Braskem 33:25-34:2.
Braskem discloses polymerizing a sample of the propylene of
Example 1 using a Ziegler-Natta catalyst to produce polypropylene.
Braskem 34:9-12.
Appellants contend that Braskem' s gasification reaction would result
in numerous unwanted compounds, and one of ordinary skill in the art would
not use the impure olefins from Braskem with the grafting techniques of
Hwang. Appeal Br. 7, citing Le Deel. ,-r 3. 6
Le declares:
Based on my review, it is clear that the olefins from Braskem
will have significant unwanted compounds that will affect the
6 Declaration of Guillaume Le, dated Nov. 15, 2013. Evid. Appendix of the
Appeal Br.
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nature of the grafting in Hwang. For example, the gasification
reaction of Braskem will result in an olefin including numerous
unwanted compounds, such as NOx, C02, H2S, CH4, and tars
with benzenic cycles of raw formula CnHm.
Le Deel. ,-r 3.
In assessing the probative value of declaratory evidence, one must
consider the nature of the matter sought to be established as well as the
strength of the opposing evidence. In re Oelrich, 579 F.2d 86, 91 (CCPA
1978). Here, Braskem specifically discloses using renewable raw materials
to produce propylene "with high purity" or "almost pure propylene."
Braskem 24: 19-27. Braskem also details specific synthesizing and distilling
steps for obtaining the highly pure propylene that is sufficient for
polymerization to polypropylene. Braskem, 25:7-23; Examples 1 and 2.
Hwang teaches grafting by mixing the polymer, e.g., polypropylene with the
grafting monomer so they react. Hwang, col. 4, 1. 58-col. 5, 1. 3. Declarant
Le, on the other hand, does not provide an adequate factual basis to support
a finding that NOx, C02, H2S, CH4, and tars with benzenic cycles of raw
formula CnHm would remain present in Braskem's polypropylene in amounts
sufficient to prevent grafting after the synthesis and purification steps
suggested by Braskem. Moreover, Le's declaration that, according to Le's
knowledge, "[i]t was commonly understood by one skilled in the art that
propylene, obtained from a gasification reaction of lignocellulosic materials
and/or other organic components, was of generally low purity, even if
possible to use in industrial process," Le Deel. i-f 5, is outweighed by the
disclosure in Braskem of producing high purity propylene from
lignocellulosic materials and using such propylene to synthesize
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polypropylene, and the lack of disclosure in Hwang of a purity requirement
for the starting polypropylene subjected to grafting.
After considering the evidence as a whole, we determine a
preponderance of the evidence supports the Examiner's finding of a reason
to use propylene from a renewable raw material to form polypropylene
which is in tum subjected to a grafting step. Although Appellants contend
that it would have been merely "obvious to try" to reach the purity levels
needed to form the grafted polypropylene, 7 the purification steps and
disclosure of using "high purity" or "polymer-grade" propylene in Braskem,
Braskem 24:20, 33 :20, provide sufficient guidance to establish that there
would have been a reasonable expectation that the polypropylene formed by
Braskem would be adequate for use in the grafting process of Hwang.
Rejection B: claims 22-27, and 29-31
The Examiner rejects claims 22-27, and 29-31 over Hwang in view
of Braskem, and further in view of Tian. Claim 22, like claim 1, is directed
to a grafted propylene polymer.
Claim 22, with key limitations highlighted, reads:
22. A propylene polymer grafted by at least one grafting
monomer selected from the group consisting of unsaturated
carboxylic acids, functional derivatives of unsaturated
carboxylic acids, unsaturated dicarboxylic acids having 4 to 10
carbon atoms, functional derivatives of unsaturated
dicarboxylic acids having 4 to 10 carbon atoms, C1-Cs alkyl
esters of unsaturated carboxylic acids, glycidyl ester derivatives
of unsaturated carboxylic acids, metal salts of unsaturated
carboxylic acids, and mixtures thereof,
wherein the propylene polymer comprises an amount of
carbon resulting from renewable raw materials of greater than
7 Reply Br. 3---6.
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20% by weight relative to the total weight of carbon of the
propylene polymer, the amount of carbon resulting from
renewable raw materials being measured according to the
standard ASTM D 6866-06, wherein the propylene polymer has
a degree of purity greater than 95% by weight.
Appeal Br. Claims Appendix 2-3 (emphasis added).
Claims 22 requires that "the propylene polymer" i.e., the "propylene
polymer grafted by at least one grafting monomer," have a degree of purity
greater than 95% by weight.
The Examiner finds that "Braskem generally embraces improving the
purity of the propylene to 'high' purity via removing gas impurities by
known methods" (Ans. 7) and relies upon a teaching in Tian of purifying
monomer that is to be polymerized to form polyolefins such as
polypropylene, and stating that, "[f]or example, when the monomer is
propylene, polymer grade propylene having a minimum purity of 99.5 wt%
was used after further purification." Tian i-f 25. According to Tian, polymer
grade propylene was further purified to remove known catalytic poisons to
parts per billion levels. Id.
The Examiner finds that Tian provides a suggestion for increasing the
purity to 99.5 wt% or greater "in order to efficiently produce the polymer
(and graft copolymer) and thereby arrive at the claimed invention because
one would want to improve the efficiency of the polymziation [sic] and
remove poisonous impurities." Final 5. Tian, as well as the prior art cited
by Appellants, 8 supports a finding that those of ordinary skill in the art
understood that impurities would poison the Ziegler-Natta catalyst Braskem
uses to polymerize propylene and thus the ordinary artisan would have
8 Appeal Br. 11-12.
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sought to use highly pure propylene. Tian if 25; Ewen, col. 2, 11. 19-32 and
col. 11, 11. 31--42;9 Tangjituabun, in its entirety. 10,11 However, there is a
problem. Claim 22 is not directed to the degree of purity of the propylene,
but to the degree of purity of the grafted propylene polymer. On the other
hand, Appellants do not distinguish between the purity of the propylene and
the purity of the grafted propylene polymer in their arguments. Appeal Br.
9-12.
There is a further disconnect between what is claimed and what is
disclosed in the Specification. Appellants' Specification is, similarly to the
Examiner and Appellants, concerned with the purity of the propylene, and
not the purity of the polymer end product. The Specification discloses
optional purification steps (purification of alcohols produced by
fermentation to separate the desired alcohol(s) from the other alcohols, and
purification of an alkene (propylene) or mixture of alkenes formed from the
alcohol) in the process of producing the propylene. Spec. 4:9-31; 9 :29-31;
10:30-34; 12:7-11. The purpose of the optional purification step(s) is to
9 Ewen et al., US 5,614,457, patented Mar. 25, 1997.
10 Tangjituabun et al., Poisoning of Active Sites on Ziegler-Natta Catalyst for
Propylene Polymerization, 26 Chinese Journal of Polymer Science 547-552
(2008).
11 Appellants do not provide any indication that Ewen and Tangjituabun
were filed or relied upon prior to the filing of the Appeal Brief. Although
37 C.F.R. § 41.33(d)(2) states that such late-filed evidence will not be
admitted (except under some circumstances not met in this appeal), the
Examiner has considered Ewen and Tangjituabun (Ans. 9) instead of issuing
a Notice of Non-compliant Appeal Brief or refusing to consider the
evidence. Given that the Examiner has considered the evidence, and due to
the nature of the way we dispose of the issues in this appeal, we consider the
evidence as well.
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obtain propylene having a sufficient degree of purity to carry
out a polymerization or a copolymerization. Obtaining
propylene having a degree of purity of greater than 85% by
weight, preferably greater than 95% by weight, preferably
greater than 99% by weight and very preferably greater than
99. 9% by weight will be preferred.
Spec. 12: 13-21.
We find no support in Appellants' original Specification for using
Appellants' process to produce the grafted propylene polymer with a
"degree of purity greater than 95% by weight," as recited in claim 22. Only
the purity of the propylene monomer is discussed. The purity of the end
product grafted polymer would appear to depend on not just the purity of the
starting propylene, but also on the purity of the grafting monomer, and the
purity of the polypropylene, as well as on the extent of the polymer
reactions. The Specification does not discuss purity in the context of the
grafting monomer, polypropylene, or the grafted propylene polymer.
The situation in this case leaves us in a conundrum. The Examiner's
rejection is inadequate because the rejection focuses only on propylene
purity, but Appellants have not identified an error in the rejection regarding
a lack of findings on polymer purity. Both the Examiner and Appellants
focus on a limitation that is not in the claim, i.e., a limitation on propylene
purity. In this case, we overturn the Examiner's rejection and enter a new
ground of rejection under 35 U.S.C. § 112 i-f 1 as follows.
We reject claims 22-27 and 29-31 under 35 U.S.C. § 112 i-f 1 as
lacking written descriptive support. As we explained above, the original
Specification fails to reasonably convey that Appellants had possession at
the time of their filing date of a propylene polymer grafted by at least one
grafting monomer ("the propylene polymer") having "a degree of purity
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greater than 95% by weight" as recited in claim 22 or the degrees of purity
recited in claims 23 and 24.
CONCLUSION
We sustain the Examiner's rejection of claims 1--4, 16, 17, 20, 21, and
28 under 35 U.S.C. § 103(a) as obvious over Hwang in view of Braskem,
but we do not sustain the Examiner's rejection of claims 22-27 and 29-31
under 35 U.S.C. § 103(a) as obvious over Hwang in view of Braskem, and
further in view of Tian. We make a new ground of rejection of claims 22-
27 and 29-31 under 35 U.S.C. § 112 i-f 1 as lacking written descriptive
support.
DECISION
The Examiner's decision is affirmed-in-part and a new ground of
rejection is entered pursuant to our authority under 3 7 C.F .R. § 41. 50(b ).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that a "new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
Should the appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment, or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART; NEW GROUND OF REJECTION
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