Ex Parte Yang et al

Patent Trial and Appeal BoardFeb 8, 2016

12941598 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/941,598 11/08/2010 23455 7590 02/10/2016 EXXONMOBIL CHEMICAL COMPANY 5200 BA YW A Y DRIVE P.O. BOX 2149 BAYTOWN, TX 77522-2149 FIRST NAMED INVENTOR Norman Yang 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. 2009EM304/2 1064 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 02/10/2016 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): chem.law. prosecution@exxonmobil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NORMAN YANG, PHILLIP T. MATSUNAGA, and MARIA C.B. GOZE Appeal2014-006680 Application 12/941,598 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 3, 4, 7-14 and 21-24 under 35 U.S.C. Â§ 103(a) as unpatentable over at least Yamada (US 2009/0181872 Al, published Jul. 16, 2009) with or without Knowles (US 7,880,047 B2, issued Feb. 1, 2011). We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The Real Party in Interest is stated to be "ExxonMobil Chemical Patents Inc." (App. Br. 3). Appeal2014-006680 Application 12/941,598 Claim 1 is illustrative of the claimed subject matter (emphasis added): 1. A process for the oligomerization of alpha-olefins, the process compnsmg: a) contacting a feedstock of alpha-olefins and at least one oligomerization or polymerization catalyst system in a reactor under oligomerization or polymerization conditions to oligomerize or polymerize the alpha-olefins, the feedstock of alpha-olefins comprising: i. at least 25 wt% nonene, and ii. at least one other alpha-olefin selected from octene, decene, or dodecene; b) removing unreacted alpha-olefins to obtain a bottoms product; and c) optionally hydrogenating the bottoms product to obtain a hydrogenated product. App. Br. 12, Claims Appendix. Appellants' arguments focus on all the claims as a group; they do not argue any of the claims separately (App. Br. 8-10). Accordingly, all of the claims stand or fall together. ANALYSIS Upon consideration of the evidence on this record and each of Appellant's contentions, we find that the preponderance of evidence supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the Examiner's Â§ 103 rejection essentially for the reasons set out by the Examiner in the Answer. We add the following for emphasis. It has been established that "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged 2 Appeal2014-006680 Application 12/941,598 claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellants' argument that the generic disclosure of Yamada does not suggest the specific combination of at least 25% nonene in combination with at least one of octene, decene, or dodecene (e.g., App. Br. 4, 5; Reply Br. 3) is unavailing for reasons set out by the Examiner (Ans. 3, 4). As pointed out by the Examiner, Yamada indeed explicitly teaches that nonene may be used in combination with at least one of these other alpha-olefins (Ans. 4; Yamada iJ 15). It has been held that a species claim was obvious over a reference disclosing over 1200 possible combinations of two ingredient types useful in diuretic compositions, where the claimed combination was but one of those disclosed. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 806-807 (Fed. Cir. 1989). Neither of the claimed ingredients was listed by the reference as being preferred. Id. Similar to the situation in Merck, the artisan of ordinary skill need only make a choice from a list explicitly set forth in Yamada to select an appropriate combination of two olefin feeds. Thus, in our view, one of ordinary skill would have considered the use of the recited alpha-olefin combinations obvious from the explicit teaching, and list, set out in Yamada. Thus, on this record, Appellants have not shown error in the Examiner's determination that one of ordinary skill in the art, using no more than ordinary creativity, would have used the known alpha-olefins from the 3 Appeal2014-006680 Application 12/941,598 list of Yamada as the feedstock of Yamada in the claimed amounts (e.g., Ans. 3-5; generally, App. Br.; Reply Br.). KSR, 550 U.S. at 417 (The predictable use of prior art elements or steps according to known methods for their established functions is likely to be obvious when it does no more than yield predictable results). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result- effective parameters, such as the amount of each alpha-olefin feedstock used in combination in Yamada. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955); In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). To the extent that the Appellants are arguing unexpected results (Reply Br. 4; App. Br. 8), the Appellants have not provided the required comparison of the claim limitations with the specific features of the closest prior art (Yamada) that is commensurate in scope with the claims (e.g., none of the Specification examples use octene, and up to 74% or so of alpha- olefins other than those named in the claim are permissible as part of the feedstock), nor explained why the results would have been unexpected by one of ordinary skill in the art (Ans. 5, 6). See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). 4 Appeal2014-006680 Application 12/941,598 Accordingly, we affirm the Examiner's rejection. The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a). AFFIRMED 5