Application of Hogan
| Citation | 559 F.2d 595 |
| Decision Date | 28 July 1977 |
| Docket Number | Patent Appeal No. 76-641. |
| Parties | Application of John Paul HOGAN and Robert L. Banks. |
| Court | United States Court of Customs and Patent Appeals |
COPYRIGHT MATERIAL OMITTED
E. Eugene Innis, Bartlesville, Okl., Young & Quigg, Washington, D. C., attys. of record, for appellants.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Fred E. McKelvey, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals affirming various rejections, under 35 U.S.C. §§ 102, 103, 112 (first paragraph), and 132, of claims 13-15 in appellants' application No. 181,185 filed September 16, 1971 (the 1971 application) for "Solid Polymers of Olefins."1 A main issue involves use of a "later state of the art" as evidence to support a rejection.
The 1971 application is said to be a continuation of application No. 648,364 filed June 23, 1967 (the 1967 application), in turn a "divisional" of application No. 558,530 filed January 11, 1956 (the 1956 application)2. The 1956 application is a continuation-in-part of application No. 476,306 filed December 20, 1954 and application No. 333,576 filed January 27, 1953 (the 1953 application).
We affirm in part, reverse in part, and remand with respect to certain rejections.
Although the 1971 application discloses several polymers, the claims are limited:3
Appellants assert that, under the provisions of 35 U.S.C. § 120,6 claims 13 and 15 are entitled to the benefit of the filing date of the 1953 application and claim 14 is entitled to the benefit of the filing date of the 1956 application.
The 1953 application discloses solid polymers made from 1-olefin monomers having a maximum chain length of eight carbon atoms and no branching nearer the double bond than the 4-position. Several olefin monomers which form such polymers are disclosed: ethylene, propylene, 1-butene, 1-pentene, 1-hexene, and 4-methyl-1-pentene.
A method of making such polymers using a catalyst containing chromium oxide on a silica-alumina support is described. The application includes twenty "examples" and twenty-five "tables" giving detailed information on: how to prepare, activate, use, and regenerate the catalyst; how to influence the molecular weight of the polymer products; what solvents or diluents to use in admixture with the olefin feed; what feed velocities, reaction pressures, reaction temperatures, and reaction times are operative; and certain physical and chemical characteristics of the polymer products.
Example I in the 1953 application includes this statement, which we designate as A:
A
4-Methyl-1-pentene gave tough, solid polymer which, however, was successfully expelled from the reactor in continuous-flow operation.
Example XVI refers to Figure 2 in the drawings, which is a graph showing thermal depolymerization curves for five polyolefin polymers and commercial polyisobutylene. Example XVI includes this statement, which we designate as B:
B
Whereas the former commercial polyisobutylene began to decompose at about 600°F, the latter (polymers of propylene, 1-butene, 1-pentene, 1-hexene, and 4-methyl-1-pentene) began to decompose at about 700-725°F.
Example XIX describes polymerizing 4-methyl-1-pentene "over chromia-alumina-silica catalyst" and states: "The 4-methyl-1-pentene polymer is a tough solid polymer suitable for a substitute for natural waxes."
The 1956 application is a continuation-in-part application and as filed contains most, but not all, of the information found in the 1953 application. Missing from the 1956 application as filed are statement B and the graph of Figure 2. Included in the 1956 application are the following new statements not present in the 1953 application, which we designate as C and D:
C
We have produced crystalline polymers of 4-methyl-1-pentene which have melting points in the range of 390 to 425°F.
D
1-Butene and 4-methyl-1-pentene can be polymerized in substantially the same manner as previously described and produce crystalline polymers. One sample of 4-methyl-1-pentene polymer thus obtained had a melting point of 394° to 421°F. A second similar polymer of 4-methyl-1-pentene produced in the same general manner had a melting point of 410 to 420°F.
The 1967 application, according to appellants' brief before the board, contains all of the disclosures relating to polymers of 4-methyl-1-pentene contained in the 1953 and 1956 applications. The 1971 application on appeal contains statements A and B, the Figure 2 graph (now Figure 5), and statements C and D.
The following table summarizes the disclosures:
Fig. 2
Application Statement Statement (now Statement Statement
(filing date) A B Fig. 5) C D
1-27-53 yes yes yes no no
1-11-56 yes no no yes yes
6-23-67 yes yes yes yes yes
9-16-71 yes yes yes yes yes
References
The references relied upon by the examiner and board were:
Haven discloses a solid poly-4-methyl-1-pentene which is described as crystalline and, when oriented as a fiber, shows a melting point of 235°C. (455°F.).
Edwards ('022) describes a solid, amorphous, elastomeric homopolymer of 4-methyl-1-pentene. The patent states that a 1,4-type linkage7 is almost exclusive, being over 95% of the repeating linkages in the homopolymer of 4-methyl-1-pentene, when polymerization using an aluminum chloride catalyst is conducted at temperatures below -60°C. The patent further states that "it has been thought possible heretofore to obtain polymerization of olefins only through 1,2-type linkage" and that a "structural copolymer" is obtained which contains structural units of the 1,2-type linkage as well as of the 1,4-type linkage, when polymerization is conducted at a higher temperature.
Edwards ('500) discloses a 1,4-type polymer of 4-methyl-1-pentene in a cross-linked form having a molecular weight in excess of 1,000,000.
Natta et al. (Natta) discloses a poly-4-methyl-1-pentene which is crystalline and which has a melting point of 205°C. (401°F.) as determined by X-ray examination.
The following rejections were affirmed by the board:
(1) Claims 13-15 under 35 U.S.C. § 112, first paragraph,8 as "based on a non-enabling disclosure."
(2) Claim 14 under 35 U.S.C. § 112, first paragraph, as "based on a disclosure which does not teach how to prepare polymers having the claimed melting point range" of 390 to 425°F.
(3) Claim 14 under 35 U.S.C. § 132 as "containing new matter in the combination of `homopolymer' and the melting point range of 390° to 425°F."
(4) Claims 13-15 under 35 U.S.C. § 102 as "fully met by Natta et al." (Natta).
(5) Claims 13 and 15 under 35 U.S.C. § 102 as "fully met by Haven."
(6) Claim 14 under 35 U.S.C. § 103 as "unpatentable over Haven."
(1) With respect to the rejection of claims 13-15 under 35 U.S.C. § 112, first paragraph, as based on a non-enabling disclosure, the examiner stated:
(2) With respect to the rejection of claim 14 under 35 U.S.C. § 112, first paragraph, as based on a disclosure which does not teach how to prepare polymers having the claimed melting point range of 390 to 425°F., the examiner stated that "claim 14 reads on a single `species' of polymer which begins to melt at 390°F and is completely melted at 425°F or on any species that melt within this range." The examiner stated further that this rejection followed from a prior board decision (not of record) involving the 1967 application which held that the disclosure was non-enabling on how to make "a species" which had a melting point "of 410 to 420°F" (found in statement D). The examiner reasoned that the specification must also be non-enabling for "the only other `species' which discloses a melting point, i.e., `394 to 421°F'" (found in statement D), and, therefore, "if the only disclosure of polymers having certain melting points is non-enabling, the raw disclosure of polymers having even broader melting points could not possibly be enabling," referring apparently to statement C.
(3) With respect to the rejection of claim 14 under 35 U.S.C. § 132 as containing new matter in the combination of "homopolymer"9 with the...
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