Ex parte Basell Poliolefine Italia S.P.A.

• Decision Date: 11 December 2006
• Docket Number: Reexamination 90/006,297,Appeal 2007-0111
• Parties: Ex parte BASELL POLIOLEFINE ITALIA S.P.A. U.S. Patent 6, 365, 687 B1 Technology Center 3900
• Court: Patent Trial and Appeal Board

Ex parte BASELL POLIOLEFINE ITALIA S.P.A. U.S. Patent 6, 365, 687 B1 Technology Center 3900

Appeal No. 2007-0111

Reexamination 90/006, 297

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 11, 2006

This Opinion is Not binding Precedent of the Board

Before: DELMENDO, TIERNEY, and MOORE, Administrative Patent Judges.

DECISION ON APPEAL

DELMENDO, Administrative Patent Judge.

STATEMENT OF THE CASE

The patent owner appeals under 35 U.S.C. §§ 134 and 306 from a final rejection of claims 1-52 of United States Patent 6, 365, 687 ('687 patent), in which (1) claims 1-4, 8-13, 15, 21-26, 28, 31, 32, 35, 39-44, and 48-52 were held to be anticipated by United States Patent 3, 058, 963 issued to Vandenberg on October 16, 1962 under 35 U.S.C. § 102(b) and (2) claims 1-52 were held to be obvious over Vandenberg under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b)(2006). We AFFIRM.

In addition, we finalize our March 30, 2005 affirmance (paper 26) of all six of the examiner's obviousness-type double patenting rejections (Final Office Action mailed May 23, 2003, paper 14).

Summary

As evidenced by the expired patents underlying the bases for the affirmed double patenting rejections, the inventor(s) and/or the patent owner's predecessor have already benefited (for the full terms of these expired patents) from the right to exclude others on subject matter within the scope of or similar to the appealed claims. It would be manifestly unfair to again exclude the public from the same or patentably indistinct subject matter for another 17-year patent term. In re Longi, 759 F.2d 887, 892-93, 225 U.S.P.Q. 645, 648 (Fed. Cir. 1985)(quoting In re Zickendraht, 319 F.2d 225, 232, 138 U.S.P.Q. 22, 27 (CCPA 1963)("The public should...be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed but also modifications or variants which would have been obvious to those of ordinary skill in the art...")).

The '687 patent under reexamination has a long and complicated prosecution history. In its brief, the patent owner faults the United States Patent and Trademark Office (PTO) for the prolonged and complex prosecution history. The record, however, demonstrates that the patent owner is equally, if not more, culpable for the delays. For example, early during the prosecution in the 1950's, the examiner indicated allowability for certain subject matter. The patentees could have ended prosecution by paying the issue fee at that time but chose not to do so. On three separate occasions, the patentees appealed the examiner's rejections to this Board. Each time, the Board affirmed the examiner's rejections. On numerous occasions, the patentees abandoned their applications in favor of other applications. In some of these continuing applications, there was no prosecution designed to advance the application to issuance and, in at least one of these applications, there was no prosecution at all. A significant portion of the delays was self-inflicted and not caused by malfeasance or misfeasance on the part of the PTO.

Although Vandenberg was cited and applied in the examination of the '687 patent, we conclude that it raises a substantial new question of patentability. We find that the original examiner (of the application that matured into the '687 patent) never finalized (i.e., completed or fully considered) the substantive patentability issues raised by this reference. We also find that, in the original examination, the examiner made a mistake in assessing an incorrect filing date for the claimed subject matter. Specifically, the appealed claims specify a polymerization process encompassing the polymerization of ethylene in any relative amount. None of the priority applications or the first two United States applications in the chain describe such processes. To the contrary, the original disclosures would have reasonably conveyed to one skilled in the relevant art that ethylene, if present, would only be polymerized in "small amounts."

Consequently, we determine that the appealed claims are not entitled to an earlier filing date sufficient to antedate Vandenberg. Vandenberg, which is available as prior art under 35 U.S.C. § 102(b), was incorrectly excluded from the realm of relevant prior art at the time the claims were issued. Because the primary purpose of the reexamination statute is to correct errors made by the government, to remedy defective governmental (not private) action, and if need be to remove patents that never should have been granted, we conclude that Vandenberg, which anticipates or renders obvious all the appealed claims, raises a substantial new question of patentability.

The Technology

The patentees state they invented a polymerization process comprising polymerizing ethylene with a specified alpha-olefin in the presence of a catalyst obtained by reacting an aluminum alkyl compound with a catalytic titanium halide compound. The catalyst recited in the appealed claims encompasses virtually all, if not all, known Ti-halide/alkylaluminum complex catalysts classified as Ziegler-Natta catalysts.^[1] Indeed, Giulio Natta, one of the named inventors, and Karl Ziegler (Max Planck Institute for Carbon Research) were jointly awarded the 1963 Nobel Prize in Chemistry for "high molecular weight polymers with spatially regular structures," i.e., polyolefins having stereospecific structures such as isotactic polypropylene based on the use of these catalysts. (Appeal brief filed September 22, 2003, paper 17 at 3; Encyclopedia of Polymer Science and Technology at 517.)

The polymers resulting from the claimed process are ubiquitous in human civilization and are made into a wide variety of everyday products (e.g., grocery bags). Total polyolefin production worldwide exceeded 50 million tons/year according to the Encyclopedia of Polymer Science and Technology, which is dated 2003.

Prior Board Decision of March 30, 2005 (Paper 26) in This Reexamination

This is the second time an appeal has been taken in this Director-ordered reexamination. In the first appeal, we affirmed all six of the examiner's rejections based on the judicially created doctrine of obviousness-type double patenting. Further, pursuant to our authority under 37 CFR § 41.50(b), we entered a new ground of rejection against claims 1-52 under 35 U.S.C. §§ 102(b) and 103(a). (March 30, 2005 Decision; Paper 26.) Because our decision included new grounds of rejection, it was not "considered final for judicial review." See 37 CFR § 41.50(b). The patent owner could have, but did not, seek an immediate rehearing of our decision pursuant to 37 CFR § 41.50(b)(2) in order to expedite judicial review of the affirmed double patenting rejections and new grounds of rejection. Instead, the patent owner reopened prosecution with respect to the new grounds of rejection pursuant to 37 CFR § 41.50(b)(1), thus again substantially affecting the rate and time of prosecution.

On reexamination, the examiner determined that the patent owner's newly submitted evidence was insufficient to overcome the new grounds of rejection and entered a final rejection against all the claims. (Final Office action mailed August 26, 2005.) The patent owner then appealed for a second time. (Amended appeal brief filed on February 23, 2006.) The proceeding is now ready for the Board's second decision on appeal.

The Rejections To Be Reviewed in This Appeal

In this reexamination, the examiner rejected the appealed claims as follows (examiner's answer mailed on March 14, 2006):

A. Claims 1-4, 8-13, 15, 21-26, 28, 31, 32, 35, 39-44, and 48-52 under 35 U.S.C. § 102(b) as anticipated by Vandenberg; and

B. Claims 1-52 under 35 U.S.C. § 103(a) as unpatentable over Vandenberg.

Claims 1, 9, and 16, which are representative of the appealed claims, are reproduced as follows:

1. A process which comprises polymerizing ethylene with an alpha-olefin, CH₂=CHR, wherein R is a saturated aliphatic radical with 2 or more carbon atoms or a cycloaliphatic radical, in the presence of a catalyst obtained by reacting an aluminum alkyl compound with a catalytic titanium halide compound

9. A process for preparing a copolymer comprising copolymerizing monomeric olefin molecules comprising a monomeric vinyl hydrocarbon having the formula CH₂=CHR, wherein R is a saturated aliphatic radical having at least 2 carbon atoms or is a cycloaliphatic radical, in the presence of a catalyst comprising a catalytic aluminum alkyl compound and a catalytic titanium halide compound

16. A process according to claim 9 wherein the monomeric olefin molecules comprise ethylene, the monomeric vinyl hydrocarbon is selected from the group consisting of 1-butene, 1-pentene, and 1-hexene, the alkyl of the catalytic aluminum alkyl compound is selected from the group consisting of ethyl, propyl, butyl, and combinations of these alkyl groups, and the catalytic titanium halide compound is a titanium chloride compound

The patent owner contends that "the PTO took more than forty years before it allowed the Natta et al. patent to issue..." and that the PTO has not acted on this reexamination with "special dispatch" as required under the law. On the merits, the patent owner contends that the rejections are in error because Vandenberg, which was applied against the claims in the prosecution of the original patent, does not raise a substantial new question of patentability under previous 35 U.S.C. § 303(a) (2001). The patent owner further contends that even if Vandenberg raises a substantial new question of patentability, it is not available as prior art because the patentees' earlier applications including the Italian priority applications provides written description support for the now claimed subject matter.

The examiner, on the other hand, asserts that Vandenberg raises a...