Ex Parte Zhao et al

Patent Trial and Appeal BoardDec 20, 2012

10693584 (P.T.A.B. Dec. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/693,584 10/24/2003 Baiyi Zhao 2002B130/2 1077 23455 7590 12/20/2012 EXXONMOBIL CHEMICAL COMPANY 5200 BAYWAY DRIVE P.O. BOX 2149 BAYTOWN, TX 77522-2149 EXAMINER MCDONOUGH, JAMES E ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 12/20/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BAIYI ZHAO, SMITA KACKER, and JO ANN CANICH ____________ Appeal 2011-003108 Application 10/693,584 Technology Center 1700 ____________ Before CHARLES F. WARREN, PETER F. KRATZ, and LINDA M. GAUDETTE, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 2-6, 9-11, and 13-17. We have jurisdiction pursuant to 35 U.S.C. § 6. Appeal 2011-003108 Application 10/693,584 2 Appellants’ claimed invention is directed to a composition of matter comprising a compound of a specified formula said to be useful as a catalyst for olefin oligomerization and/or polymerization. Claim 2 is illustrative and reproduced below: 2. A composition of matter with the following formula: wherein M is iron, cobalt, or nickel; N is nitrogen; P is phosphorus; R1, R2, R3, and R4 are hydrocarbyl radicals; Y is a hydrocarbyl bridge comprising a backbone wherein the backbone comprises a chain that is four or more carbon atoms long and is selected from the group consisting of butylene, pentylene, hexylene, heptylene, octylene, nonylene, decylene, undecylene, dodecylene, tridecylene, tetradecylene, pentadecylene, hexadecylene, heptadecylene, octadecylene, nonadecylene, eicosylene, heneicosylene, docosylene, tricosylene, tetracosylene, pentacosylene, hexacosylene, heptacosylene, octacosylene, nonacosylene, triacontylene, cyclohexylene, cyclooctylene, cyclodecylene, cyclododecylene, biphenyl, butenylene, penentylene, hexenylene, heptenylene, octenylene, nonenylene, decenylene, undecenylene, dodecenylene, hexynylene, heptynylene, octynylene, nonynylene, decynylene, undecynylene, dodecynylene, butadienylene, pentadienylene, hexadienylene, heptadienylene, octadienylene, nonadienylene, decadienylene, undecadienylene, dodecadienylene, hexatrienylene, octatrienylene, decatrienylene, and dodecatrienylene radicals; and (f) each X is independently methyl, ethyl, propyl, butyl, pentyl, hexyl, heptyl, octyl, nonyl, decyl, undecyl, dodecyl, tridecyl, tetradecyl, pentadecyl, hexadecyl, heptadecyl, octadecyl, nonadecyl, eicosyl, heneicosyl, docosyl, tricosyl, tetracosyl, pentacosyl, hexacosyl, heptacosyl, octacosyl, nonacosyl, Appeal 2011-003108 Application 10/693,584 3 triacontyl, hydride, phenyl, benzyl, phenethyl, tolyl, methoxy, ethoxy, propoxy, butoxy, dimethylamino, diethylamino, methylethylamino, phenoxy, benzoxy, allyl, 1,1-dimethyl allyl, 2-carboxymethyl allyl, 1,1,1,5,5,5-hexa-fluoroacetylacetonate, 1,1,1-trifluoro-acetylacetonate, and 1,1,1-trifluoro-5,5-di-methylacetylacetonate; or the two X's are connected to form catecholate, 3,5- dibutylcatecholate, 3,6-dibutylcatecholate, 3,6-dibutyl-4,5- dimethoxycatecholate, 3,6-dibutyl-4,5-dichlorocatecholate, 3,6-dibutyl-4,5- dibromocatecholate, 1,3-propylene, chloride, bromide, iodide, or 1,4- butylene. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Beach US 4,377,528 Mar. 22, 1983 Buchwald US 6,307,087 B1 Oct. 23, 2001 Speiser US 7,199,075 B1 Apr. 3, 2007 Loveday US 2001/0044508 A1 Nov. 22, 2001 Claims 2-6 and 13-17 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Buchwald. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Buchwald in view of Loveday. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Buchwald in view of Speiser. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Buchwald in view of Beach. We reverse the stated rejections. Our reasoning follows. Anticipation Rejection In order for the Examiner to carry the burden to establish a prima facie case of anticipation, the Examiner must establish where each and every element of the claimed invention, arranged as required by the claim, is found in a single prior art reference, either expressly or under the principles of Appeal 2011-003108 Application 10/693,584 4 inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In other words, for the Appellants’ claimed invention to be anticipated, the reference must lead one of ordinary skill in the art to a product which falls within the scope of the claim by way of describing such product “without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972). See also Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Here the Examiner selectively points out what Buchwald discloses with respect to various disclosed embodiments (Ans. 4, 9, and 10), but does not point out where Buchwald describes a product transition metal complex that meets all of the requirements, as recited in independent claims 2 or 16 without significant picking and choosing from among various ligand, metal and base compounds, and reaction conditions that may be employed in forming and using a transition metal complex catalyst as described by Buchwald. In this regard, the Examiner maintains that Buchwald describes a catalyst comprising an implied reaction product of a metal precursor with a ligand that anticipates the claimed composition of matter (Ans. 9; see independent claims 1 and 16), the ligand based on selecting a particular ligand from among those according to formula 4 of Buchwald (abstract; col. 7, ll. 5-45), and a metal precursor based on choosing a particular Ni metal precursor from among those Buchwald generally teaches as possibilities (col. 32, ll. 22-32) (Ans. 4 and 9). Also, the Examiner refers to compound formula 24 of Buchwald as a possible ligand selection for certain catalyzed Appeal 2011-003108 Application 10/693,584 5 reactions and alleges that Buchwald teaches few metals, among which palladium and nickel are preferred, and only identifies eight nickel metal precursors, among which three would allegedly yield a product corresponding to the claimed product if it were to be reacted with Buchwald’s formula 24 ligand compound (Ans. 9-10; Buchwald, col. 5, ll. 55-70, col. 31, ll. 40-48, col. 25, ll. 55-70). Appellants, on the other hand, maintain that Buchwald does not describe selecting and bringing together a specific combination of bidentate ligand and metal compound such that the metal (iron, cobalt or nickel) binds to the bidentate ligand through both a nitrogen atom and a phosphorous atom in a manner as required by claims 2 and 16 (Br. 5). 1 On this record, we agree with Appellants that the Examiner has not carried the burden to establish that Buchwald describes a product metal complex that either of claims 2 or 16 read on. We note that formula 4 of Buchwald relied upon by the Examiner is but one of seven general structural formulas for a ligand compound provided by Buchwald, with each formula providing for numerous possible ligand compound choices, and with each ligand being useable in multiple embodiments with a number of possible metal/metal compound choices, base choices, and reaction choices (col. 2, l. 15- col. 25, l. 39). For example, with respect to performing certain transition metal catalyzed amination reactions, Buchwald discloses two possible ligand compound choices, including compound formula 24 (Ans. 4, 9, and 10: Buchwald, col. 25, l. 45 - col. 26, l. 50). Elsewhere, Buchwald teaches that a variety of metals and metal compounds can be employed with various ligand 1 See also Item No. 6 of the Declaration under 37 C.F.R. § 1.132 of Jo Ann Canich, Ph.D., accompanying the Appeal Brief. Appeal 2011-003108 Application 10/693,584 6 compounds and possibly other compounds, including base compounds, wherein the metal compounds include nickel compounds and palladium compounds, the nickel compounds including nickel chloride-containing compounds (col 31, l. 17- col. 34, l. 36). However, the Examiner has not established that Buchwald describes the use of a particular nickel metal salt together with a bidentate ligand of formula 24 with sufficient specificity and in a manner such that a nickel metal complex within the scope of the rejected independent claims 2 and 6 would have necessarily resulted from their interaction. It follows that we do not sustain the Examiner’s anticipation rejection on this record. The obviousness rejections pertaining to certain dependent claims are founded, at least in part, upon the anticipation rejection (Ans. 4-8 and 11- 16). The Examiner does not articulate how the applied secondary references make up for the deficiencies in the Examiner’s anticipation rejection over Buchwald. As such, we likewise reverse the Examiner’s obviousness rejections on this record. ORDER The Examiner’s decision to reject the appealed claims is reversed. REVERSED sld