Bamberger v. Cheruvu

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 409
Filed by: 	Merits Panel
Box Interference
Washington, D.C. 	20231 	Entered
Tel: 	703-308-9797 	18 February 1998
Fax: 	703-308-7953
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
ROBERT L. BAMBERGER, PAUL M. GERMAN,
GERALD D. MALPASS, Jr., and LAWRENCE K. LOCKE,
Junior Party,
v.
SUBRAHMANYAM CHERUVU, FREDERICK Y. LO
and S. CHRISTINE ONG,
Senior Party.
Patent Interference No. 103,844
Before: 	STONER, Chief Administrative Patent Judge, and
McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge
MEMORANDUM OPINION AND ORDER
Bamberger Preliminary Motion 4
for judgment based on alleged
unpatentability of Cheruvu claims 22-35

Table of contents
A. 	Introduction . . . . . . . . . . . . . . . . . . . . . . 	1
B. 	Abbreviations 	. . . . . . . . . . . . . . . . . . . . . 	1
C. 	Evidentiary burden of proof in an interference when an
applicant maintains that a patent claim is unpatentable
. . . . . . . . . . . . . . . . . . . . . . . . . . . . 	1
D. 	Construction of claims in an interference with
respect to the issue of patentability 	. . . . . . . . . 	7
E. 	Evidentiary burden and claim construction applied to
patentability determinations made in this interference . 	14
F. 	Preliminary motions for judgment under 37 CFR
§ 1.633(a) based on the prior art 	. . . . . . . . . . . 	14
G. 	Findings of fact . . . . . . . . . . . . . . . . . . . . 	16
Cheruvu process claim 34 and product-by-process
Difference between Cheruvu claims 22-33 and
Background 	. . . . . . . . . . . . . . . . . . . . 	16
claim 35 . . . . . . . . . . . . . . . . . . . 	16
Scope and content of the Welborn patent . . . . . . 	18
The Lo experiments 	. . . . . . . . . . . . . . . . 	20
Table 1 	. . . . . . . . . . . . . . . . . . . 	23
The Speed testimony--Part 1 . . . . . . . . . . . . 	24
Cheruvu product claim 22 	. . . . . . . . . . . . . 	26
The Speed testimony--Part 2 . . . . . . . . . . . . 	27
Dr. Lo's Table 2 	. . . . . . . . . . . . . . . . . 	30
The Welborn declaration . . . . . . . . . . . . . . 	30
Table 2 	. . . . . . . . . . . . . . . . . . . 	31
Welborn 	. . . . . . . . . . . . . . . . . . . 	31
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H. 	Discussion . . . . . . . . . . . . . . . . . . . . . . . 	32
1. 	Burden of proof . . . . . . . . . . . . . . . . . . 	32
2. 	Anticipation 	. . . . . . . . . . . . . . . . . . . 	34
3. 	Obviousness . . . . . . . . . . . . . . . . . . . . 	38
4. 	Additional observation 	. . . . . . . . . . . . . . 	41
I. 	Order 	. . . . . . . . . . . . . . . . . . . . . . . . . 	42
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A. 	Introduction
Bamberger Preliminary Motion 9 (Paper No. 83) seeks entry
of judgment as to Cheruvu claims 22-35 on the ground that those
claims are unpatentable under 35 U.S.C. §§ 102, alternatively
under 35 U.S.C. § 103, over U.S. Patent 4,808,561 to Welborn
(BX-1010).
B. 	Abbreviations
BR- 	Bamberger record
BX- 	Bamberger Exhibit
CX- 	Cheruvu Exhibit
LLDPE 	linear low density copolymers
of ethylene
MFR 	melt flow ratio, which is
determined by dividing I21 by I 2
ppm 	parts per million
C. 	Evidentiary burden of proof in an interference when an
applicant maintains that a patent claim is unpatentable
1.
In opposition to Bamberger's preliminary motion, Cheruvu
makes the following argument (Paper No. 129, page 1, ¶ 1):
Moreover, in these proceedings, the claims [of the
Cheruvu patent] are to be construed narrowly.
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No authority is cited and Cheruvu fails to provide any cogent
rationale in support of its argument.
In reply, Bamberger makes a contrary argument (Paper
No. 229, pages 1-2):
Cheruvu is wrong. 	In re Van Geuns, 988 F.2d 1181,
1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) ("In the
patentability context, claims are to be given their
broadest reasonable interpretations."). 	Indeed,
Cheruvu's proposition is contrary to the longstanding
rule that claims are to be interpreted in the same
manner for validity as they are for infringement.
Thus, Cheruvu's/Mobil's claims should be interpreted
with the same scope for assessing their validity here
as Mobil urged when accessing infringement in the
Eastern District of Virginia.
Neither argument has been particularly helpful. 	Without the
benefit of well-developed views from either party, we undertake
sua sponte to determine the standard applicable to construction
of claims of a party's patent involved in an interference before
the Patent and Trademark Office when an opponent maintains that
those claims are unpatentable.
The parties have argued at various times throughout this
interference that (1) the issues in the Eastern District of
Virginia and here are the same (when it has been convenient to
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make that argument), (2) the issues in the Eastern District of
Virginia and here are different (when it has been convenient to
make that argument) and; (3) positions taken by a party in the
Eastern District of Virginia bind that party forever, in
particular in this proceeding. 	Bamberger argues in this
interference that Cheruvu's patent claims are "invalid." 	But,
our enabling statute uses the word "patentability." 	35 U.S.C.
§ 135(a). 	None of these arguments have been particularly
helpful.
2.
The Patent Statute provides that, in an interference, the
board "may determine questions of patentability." 	35 U.S.C.
§ 135(a). 	"Validity" is a concept exclusively reserved for civil
actions. 	A patentee may file a civil action for infringement of
its patent. 	35 U.S.C. § 281. 	In the civil action, the patent is
presumed valid. 	35 U.S.C. § 282, first sentence. 	Nevertheless,
a defendant may assert that a patent claim is not valid and the
burden of establishing invalidity of a patent claims "shall rest
on the part asserting such invalidity." 	35 U.S.C. § 282, first
paragraph, last sentence. 	The Federal Circuit has judicially
determined that the burden must be sustained by clear and
convincing evidence. 	American Hoist & Derrick Co. v. Sowa &
Sons, Inc., 725 F.2d 1350, 1358-60, 220 USPQ 763, 769-71 (Fed.
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Cir. 1984); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 1422,
8 USPQ2d 1323, 1327 (Fed. Cir. 1988). 	Among other things,
invalidity may be based on prior art or a failure to comply with
35 U.S.C. § 112. 	35 U.S.C. § 282, second paragraph. 	Placing the
burden on a party alleging invalidity simply makes common sense,
apart from any burden placed on an alleged infringer by 35 U.S.C.
§ 282. 	How could a patentee prove that its claimed invention is
not invalid?
3.
The presumption of validity has not been held to apply
in proceedings before the Patent and Trademark Office.
Nevertheless, an entity maintaining that a claim is unpatentable
in a proceeding in the PTO bears the burden of proving its case.
Again, placing the burden on a party alleging unpatentability in
a proceeding before the PTO simply makes common sense, apart from
any burden placed on an alleged infringer by 35 U.S.C. § 282.
How could an applicant prove that its claimed invention is not
unpatentable?
An examiner's burden of proving unpatentability when
rejecting claims in a patent application is by a preponderance of
the evidence. 	In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3
(Fed. Cir. 1985). 	The same burden is applicable in a
reexamination proceeding. 	In re Etter, 756 F.2d 852, 857-58,
225 USPQ 1, 4-5 (Fed. Cir.) (in banc), cert. denied, 474 U.S. 828
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(1985). 	Likewise, during examination of an application to
reissue a patent, the burden is preponderance of the evidence.
In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed.
Cir. 1983). 	See also Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427, 7 USPQ2d 1152, 1155-56 (Fed. Cir. 1988).
We cannot think of any reason why that same burden should
not apply when unpatentability is asserted of a claim of an
application or a patent involved in an interference. 	We can
think of a lot of reasons why the burden should be preponderance
of the evidence.
There is no reason apparent to us for requiring a party in
an interference to prove by clear and convincing evidence that a
claim in its opponent's application is unpatentable. 	Reason and
common sense dictate that the party should have the same burden
of proof as an examiner. 	Since a patentee and an applicant can
claim identical subject matter, why should a higher burden be
imposed upon an applicant seeking to have its patentee opponent's
claims held unpatentable? 	If different burdens were placed on
applicants and patentees, it would be possible for a patentee to
prevail on the same evidence which defeats an applicant. 	The
language "may determine questions of patentability" of 35 U.S.C.
§ 135(a) would be rendered partially useless, if different
burdens were placed on proving unpatentability of patent
vis-à-vis application claims. 	Moreover, we note that 35 U.S.C.
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§ 282 does not impose a clear and convincing evidence
burden--that burden was judicially created for infringement civil
actions.
There are significant differences between proceedings in
a civil action and proceedings in the PTO. 	In all proceedings
in the PTO, a party has an opportunity to amend, and narrow,
the scope of its claims when confronted with prior art. 	An
applicant, a reissue applicant and a patent owner in a
reexamination proceeding may file an amendment. 	35 U.S.C. §§ 132
and 305; 37 CFR §§ 1.111 and 1.550(b). 	Likewise, a patentee
involved in an interference may narrow its claims by filing an
application to reissue the patent (35 U.S.C. § 251) and
requesting that the reissue application be added to the
interference. 	37 CFR § 1.633(h). 	Any narrower patentable claims
in the application for reissue may appear in a reissue patent,
even if the original patent claims are held to be unpatentable,
provided the patentee otherwise prevails on priority. 	What an
applicant involved in an interference can accomplish through a
motion to narrow its claims under 37 CFR § 1.633(i), a patentee
involved in the same interference can accomplish through filing a
reissue application and taking advantage of 37 CFR § 1.633(h).
Many patentees involved in interference ultimately end up filing
an application to reissue an involved patent and having the
application for reissue added to the interference.
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4.
We hold that an applicant asserting unpatentability of a
patent claim in an interference bears a burden of proving its
case by a preponderance of the evidence. 	Our holding is
consistent with other non-binding precedent by other merits
panels. 	Behr v. Talbott, 1992 Pat. App. LEXIS 31 (Bd. Pat. App.
& Int. 	July 1, 1992) ("[t]he amount of evidence required to
prevail on a motion under 37 CFR § 1.633(a) for judgment on the
ground of unpatentability is a preponderance of the evidence");
Schrag v. Strosser, 21 USPQ2d 1025, 1027 (Bd. Pat. App. & Int.
1991); Lamont v. Berguer, 7 USPQ2d 1580, 1582 (Bd. Pat. App. &
Int. 1988).
We recognize that when an application is filed after a
patent issues, that the applicant must prove priority by clear
and convincing evidence. 	Price v. Symsek, 988 F.2d 1187, 26
USPQ2d 1031 (Fed. Cir. 1993). 	In the interference before us, the
Bamberger application was copending with the application which
matured into the Cheruvu patent. 	We leave for another case the
determination of whether unpatentability should be based on clear
and convincing evidence in those interferences where the junior
party application was filed after the senior party patent issued.
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D. 	Construction of claims in an interference with
respect to the issue of patentability
1.
During examination of a patent application, claims are given
their broadest reasonable construction consistent with the
specification. 	Burlington Industries v. Quigg, 822 F.2d 1581,
1583, 3 USPQ2d 1436, 1438 (Fed. Cir. 1987); In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). 	Claims in
an application to reissue a patent are given their broadest
reasonable construction consistent with the specification. 	In re
Reuter, 670 F.2d 1015, 1019, 210 USPQ 249, 253 (CCPA 1981).
Likewise, the same rule applies to unexpired patents undergoing
reexamination. 	In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ
934, 936 (Fed. Cir. 1984). 	The rationale upon which each of
these precedents is based is that an applicant or a patentee in
proceedings in the PTO has an opportunity to amend its claims.
2.
Where, however, a patentee has no opportunity to amend,
claims are construed, if possible, to sustain their
patentability. 	For example, in a reexamination proceeding before
the PTO, the claims of an expired patent will be construed to
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sustain their patentability. 	Ex parte Papst-Motoren, 1 USPQ2d
1655 (Bd. Pat. App. & Int. 1986).1
In a civil action for alleged infringement, likewise claims
are construed, if possible, to sustain their validity. 	Turrill
v. Michigan S. & N.I. R.R., 68 U.S. (1 Wall.) 491, 510 (1863)
("Patents for inventions are not to be treated as mere
monopolies, and, therefore, odious in the eyes of the law; but
they are to receive a liberal construction, and under the fair
application of the rule, ut res magis valeat quam pereat, are, if
practicable, to be so interpreted as to uphold and not to destroy
the right of the inventor."). 	See also Klein v. Russell, 86 U.S.
(19 Wall.) 433, 466 (1873), and ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 932 (Fed.
Cir. 1984) (in district court litigation, claims are to be
construed, if possible, to sustain their validity). 	A rationale
supporting each of these precedents, is that a patentee cannot
amend its claims in a civil action before a district court.
3.
For reasons given earlier in this opinion, the ability of a
patentee to file an application to reissue a patent and have the
reissue application added to the interference, in effect, allows
1 	A civil action for alleged infringement may be brought up to six
years after a patent expires. 	35 U.S.C. § 286. 	Hence, the PTO will reexamine
a patent for at least six years after it expires. 	There is no opportunity to
amend claims after a patent expires.
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a patentee to amend claims of a patent involved in an
interference. 	A broader claim can only be presented within two
years of the date a patent issues. 	35 U.S.C. § 251, fourth
paragraph. 	But, a narrower claim can be presented at any time.
We hold that, when the patentability of a patent claim
involved in an interference is under consideration, the patent
claim shall be given its broadest reasonable construction
consistent with the specification.
4.
Nothing in our opinion should be construed as affecting the
well-established rules for construing a count. 	A count is not a
claim. 	Rather, a count is solely a vehicle for determining the
admissible evidence on the issue of priority. 	Case v. CPC
International, Inc., 730 F.2d 745, 749, 221 USPQ 196, 199 (Fed.
Cir.), cert. denied, 469 U.S. 872 (1984); Squires v. Corbett, 560
F.2d 424, 433, 194 USPQ 513, 518-19 (CCPA 1977). 	However, it is
a fact that a determination of the scope of a count, particularly
today where counts are often written in an alternative format
(i.e., "the composition of claim 1 of A or the composition of
claim 12 of B"), will often involve construction of the scope of
a claim which forms part of the count.
There are well-established rules for construing the scope of
a count. 	Notwithstanding the use of alternative language in
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counts, in the absence of ambiguity, the language of a count
still should be given the broadest reasonable interpretation it
will support. 	It should not be given a contrived, artificial or
narrow interpretation which fails to apply the language of the
count in its most obvious sense. 	Only when counts are ambiguous
may resort be had to the application or patent where the count
originated. 	Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 500,
42 USPQ2d 1608, 1612 (Fed. Cir. 1997). 	See also Mead v.
KcKirnan, 585 F.2d 504, 507, 199 USPQ 513, 515 (CCPA 1978)
("[a]bsent ambiguity, interference counts are to be given their
broadest reasonable interpretation").
5.
Cheruvu argues that Bamberger relies on "extrinsic evidence
that is not pertinent to claim construction under Markman" (Paper
No. 129, page 1). 	There is no citation to "Markman." 	Cheruvu
does not explain what "extrinsic evidence" relied upon by
Bamberger is "not pertinent." 	Nor did Cheruvu take advantage of
the evidence excluding provisions of 37 CFR § 1.656(h).
By "Markman," we assume that Cheruvu is referring to Markman
v. Westview Instruments Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.
Cir. 1995) (in banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996).
A significant portion of Section IV, Part A, of the Federal
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Circuit's in banc Markman opinion contains a discussion of
certain principles which can be used to assist in the
construction of the scope of claims. 	52 F.3d at 979-81,
34 USPQ2d at 1329-1333. 	The principles include:
(1) 	The construction of a claim is an issue of law.
(2) 	The claims, specification and prosecution history
(i.e., the "intrinsic evidence") may be considered to ascertain
the meaning of claims.
(3) 	Expert testimony, including evidence of how those
skilled in the art would interpret the claims, may also be used.
(4) 	Claims must be read in view of the specification,
of which they are a part.
(5) 	The description in the specification may act as a
sort of dictionary, which explains the invention and may define
terms used in the claims.
(6) 	A patentee is free to be its own lexicographer.
The caveat is that any special definition given to a word must be
clearly defined in the specification.
(7) 	The written description part of the specification
itself does not delimit the right to exclude. 	That is the
function and purpose of claims.
(8) 	To construe claim language, it is also appropriate
to consider the patent's prosecution history, if it is in
evidence. 	We will note, at this point, that in an interference,
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the specification, claims and drawings of involved applications
and patents are part of the record. 	However, the file wrapper of
involved and benefit applications and patents (i.e., prosecution
history) must be placed in evidence. 	37 CFR § 1.671(a).
(9) 	The "undisputed public record" of proceedings in
the Patent and Trademark Office is of primary significance in
understanding the claims. 	Therefore, a court has broad power to
look as a matter of law to the prosecution history of the patent
in order to ascertain the true meaning of language used in the
patent claims:
The construction of the patent is confirmed by the avowed
understanding of the patentee, expressed by him, or on his
half [sic-behalf], when his application for the original
patent was pending. . . . When a patent bears on its face a
particular construction, inasmuch as the specification and
claim are in the words of the patentee, . . . such a
construction may be confirmed by what the patentee said when
he was making his application.
Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 227 (1880).
(10) 	Although the prosecution history can and should be
used to understand the language used in the claims, it cannot
"enlarge, diminish, or vary" the limitations in the claims.
(11) 	Extrinsic evidence consists of all evidence
external to the patent and prosecution history, including expert
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and inventor testimony, dictionaries, and learned treatises.
(a) 	Extrinsic evidence may be helpful to explain
scientific principles, the meaning of technical terms, and terms
of art that appear in the patent and prosecution history.
(b) 	Extrinsic evidence may demonstrate the state of
the prior art at the time of the invention. 	It is useful "to
show what was then old, to distinguish what was new, and to aid
the court in the construction of the patent.
(12) 	When the intrinsic evidence is ambiguous, Bell &
Howell Document Mgt v. Altek Systems, ___ F.3d ____,____, 45
USPQ2d 1033, 1037-38 (Fed. Cir. 1997), a court may, in its
discretion, receive extrinsic evidence in order "to aid the court
in coming to a correct conclusion" as to the "true meaning of the
language employed" in the patent.
(13) 	Extrinsic evidence is to be used for the court's
understanding of the patent, not for the purpose of varying or
contradicting the terms of the claims.
(14) 	After considering the extrinsic evidence, the
court finally arrives at an understanding of the language as used
in the patent and prosecution history. 	The court must then
pronounce as a matter of law the meaning of that language.
(15) 	Through this process of construing claims by,
among other things, using certain extrinsic evidence that the
court finds helpful and rejecting other evidence as unhelpful,
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and resolving disputes in route to pronouncing the meaning of
claim language as a matter of law based on the patent documents
themselves, the court is not crediting certain evidence over
other evidence or making factual evidentiary findings. 	Rather,
the court is looking to the extrinsic evidence to assist in its
construction of the written document, a task it is required to
perform.
E. 	Evidentiary burden and claim construction applied to
patentability determinations made in this interference
In deciding Bamberger Preliminary Motion 4, as well as other
patentability motions in this interference, we have applied the
principles set out in Parts B and C. 	To the extent applicable,
we have also applied the "Markman" principles set out in Part D,
Section 5.
F. 	Preliminary motions for judgment under 37 CFR
§ 1.633(a) based on the prior art
The rules authorize a party to raise the unpatentability of
an opponent's claim based on the prior art. 	Unpatentability is
raised by filing a preliminary motion under 37 CFR § 1.633(a).
A party who files a motion, including a preliminary motion
under Rule 633(a), must comply, inter alia, with 37 CFR
§ 1.637(a), which provides in part:
A party filing a motion has the burden of proof to
show that it is entitled to the relief sought in the
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motion. 	Each motion shall include a statement of the
precise relief requested, a statement of the material
facts in support of the motion, in numbered paragraphs,
and a full statement of the reasons why the relief
requested should be granted.
We take this opportunity to comment on the preferred manner
of setting out "a full statement of the reasons why" a claim
should be held unpatentable over the prior art.
When anticipation (i.e., 35 U.S.C. § 102) is the basis for
unpatentability, the claim alleged to be unpatentable should be
set out along with parenthetical insertions describing exactly
where a prior art reference describes each limitation of the
claim. 	A similar procedure should be used for each claim of an
opponent which a party maintains is anticipated. 	In this
respect, we appreciate the effort made by Bamberger in Attachment
A of its Supplement to Bamberger Preliminary Motion 4 (Paper No.
91).
When obviousness (i.e., 35 U.S.C. § 103) is the basis for
unpatentability, the claim alleged to be unpatentable should be
set out along with parenthetical insertions describing which
limitations in the claim are described in a prior art reference.
Any difference should then be explicitly identified. 	Finally, an
explanation should be made as to why the subject matter of the
claim, as a whole, would have been obvious to a person having
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ordinary skill in the art notwithstanding any difference.
Furthermore, the explanation should include a discussion (1) into
the level of ordinary skill in the art and (2) any evidence of
so-called "secondary factors" (which we prefer to call objective
evidence of obviousness and/or non-obviousness). 	A similar
procedure should be used for each claim of an opponent which a
party maintains is unpatentable based on obviousness.
G. 	Findings of fact
Background
1. 	According to Bamberger, Cheruvu claims 22-35
(reproduced in Appendix 409-1) are unpatentable under 35 U.S.C.
§ 102, alternatively under 35 U.S.C. § 103, over U.S. Patent
4,808,651 to Welborn (BX-1010).
2. 	The application which matured into the Cheruvu
patent was filed on March 25, 1993 (BX-1007, page 1).
3. 	The Welborn patent was issued on February 28, 1989
(BX-1010, page 1).
4. 	Welborn is prior art vis-à-vis Cheruvu under
35 U.S.C. § 102(b).2
Cheruvu process claim 34 and product-by-process claim 35
5. 	Bamberger argues that Cheruvu claim 35 is
anticipated.
2 	To the extent this finding is a conclusion of law, it may be treated
as a conclusion of law.
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6. 	Cheruvu claim 35 reads:
The product produced by the process of claim 34.3
7. 	Cheruvu claim 35 thus depends from Cheruvu
claim 34, which reads (indentation and paragraph numbering ours):
A gas phase process for producing an as-synthesized
composition which
(1) 	is dry and
(2) 	solvent-free and
comprises spherical, non-porous particles, which has
[sic--have]
(a) 	an average particle size of 0.015 to 0.035
inches, and
(b) 	a settled bulk density of from 25 to 36
lb/ft 	and	3
which is a copolymer of ethylene and an alpha olefin, which
(i) 	has a density of 0.902 to 0.929,
(ii) 	a MFR of 15 to about 20, and
(iii) 	a M /M 	of from about 2.5 to about 3.0,	w 	n
3 	A product by process claim defines a product. 	The product may be
anticipated by any prior art reference which describes a "product" which is
identical to a "product by process" even if "product" is made by a method
which differs from the process used to make the "product by process."
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
rationale is that a product is old if it has been made by any method.
method of making an old product may, however, be patentable.
See
The
A new
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comprising contacting ethylene and said alpha olefin with a
catalyst
(I) 	at a temperature of about 60E C. to about 95E
C.
(II) at a pressure of from about 100 to about 350
psi,
wherein the catalyst comprises silica
(A) 	having reactive hydroxyl groups and
impregnated with a zirconocene compound
and an aluminoxane, and
(B) 	which has an Al to Zr ratio of from 50
to 500.
Scope and content of the Welborn patent
8. 	In the language of Cheruvu claim 34, Welborn
explicitly describes (column and line insertions are to Welborn):
A gas phase (e.g., col. 8, lines 35-36 and 60 et seq.;
col. 12, line 23) process for producing an as-synthesized
composition (e.g., col. 12, lines 42-46) which
(1) 	is dry and
(2) 	solvent-free and
comprises spherical, non-porous particles, which has
[sic--have]
- 19

(a) 	an average particle size of 0.015 to 0.035
inches, and
(b) 	a settled bulk density of from 25 to 36
3	
lb/ft 	and
which is a copolymer of ethylene and an alpha olefin
(col. 1, lines 9-11 -- 1-butene and 1-hexene; col. 2,
lines 36-37 and 53-54; col. 12, line 59 -- 1-butene), which
(i) 	has a density of 0.902 to 0.929 [gm/cc]
(col. 12, line 62 -- density of 0.918),
(ii) 	a MFR of 15 to about 20, and
(iii) 	a M /M 	of from about 2.5 to about 3.0	n	w
4	(col. 13, lines 51-52 -- M /M 	= 2.5 ),	w 	n
comprising contacting ethylene and said alpha olefin with a
catalyst
(I) 	at a temperature of about 60E C. to about
95E C (col. 10, lines 41-44 -- -60E to
280EC; col. 12, line 39 -- 85EC).
(II) at a pressure of from about 100 to about 350
psi (col. 10, lines 45-48 -- 1 to 500 atm;
col. 12, line 39 -- 200 psi),
4 	In Welborn's Example 9, the weight average molecular weight is
described as 190,00 (which is a typo which should read 190,000) and the number
average molecular weight is reported as 76,000. 	M /M 	= 190000 / 76000 = 2.5.	w 	n
But, Welborn's polymer (which may be a homopolymer (BX-1096, page 4, ¶ 13))
having an M /M 	of 2.5 has a density of 0.958 gm/cc (which is outside the	w 	n
density range of 0.902 to 0.929 gm/cc required in Cheruvu claim 34).
- 20

wherein the catalyst comprises silica (col. 11, line 23 --
Davison 952 silica)
(A) 	having reactive hydroxyl groups and
impregnated with a zirconocene compound
(col. 11, lines 66-67 -
bis(n-butyl-cyclo-pentadienyl) zirconium
dichloride) and an aluminoxane (col. 11, line
27 -- methyl alumoxane), and
(B) 	which has an Al to Zr ratio of from 50 to 500
(col. 5, lines 51-52 -- Al:metal of from 1:1
to 100:1; col. 5, line 64 -- metal may be
zirconium).
9. 	Bamberger maintains that one having ordinary
skill in the art would understand from other evidence in the
record that the property limitations not explicitly described by
Welborn are inherent. 	Bamberger relies in part on certain
experiments performed by Dr. Frederick Y. Lo (a Mobil employee
and a named inventor in the Cheruvu patent) to establish that
certain properties in Cheruvu claim 34 are inherently described
by Welborn.
The Lo experiments
10. 	There came a time during prosecution of the
application which matured into the Cheruvu patent that the
- 21

examiner entered a rejection of the then pending Cheruvu claims
as being unpatentable under 35 U.S.C. § 102(b), alternatively
under 35 U.S.C. § 103, over the Welborn patent (BX-1007,
pages 046-048).
11. 	In response to the rejection, Cheruvu filed a
declaration by Dr. Lo describing certain experiments which were
said to have been conducted for the purpose of making a
comparison of the copolymers made in accordance with the Welborn
method vis-à-vis copolymers made by the method claimed by Cheruvu
(CX-1).
12. 	Bamberger Exhibit 1011 comprises copies of Mobil
laboratory notebook and analysis describing, among other things,
the Lo experiments mentioned above.
13. 	Bamberger relies on four Lo experiments to make
out a case of inherency. 	Those Lo experiments are identified in
the record as:
a. 	Run 4086-108 (BX-1011, pp. MOC-099974-76)
b. 	Run 4086-109 (BX-1011, pp. MOC-099977-79)
c. 	Run 4086-111 (BX-1011, pp. MOC-099983-85)
d. 	Run 4086-118 (BX-1011, pp. MOC-099993-95).
14. 	Cheruvu maintains that the four Lo experiments
"are not representative of the Welborn '561 catalysts" (CX-1,
page 26, ¶ 64).
- 22

15. 	Cheruvu maintains, however, that other Lo
experiments are representative (CX-1, page 16, Table 1).
Those Lo experiments are identified in the record as:
a. 	Run 4086-107 (BX-1011, pp. MOC-099971-73).
b. 	Run 4086-121 (BX-1011, pp. MOC-100000-02).
c. 	Run 4086-122 (BX-1011, pp. MOC-100003-04).
d. 	Run 4086-123 (BX-1011, pp. MOC-100005-06).
16. 	From tables in both Bamberger Preliminary Motion 4
and Cheruvu Exhibit 1, Bamberger Exhibits 1011, 1141 and 1142,
attachment A to the Supplement to Bamberger Preliminary Motion 4
and information contained in a declaration filed during ex
parte prosecution by Cheruvu before the examiner (BX-1007,
pages 061-070), polymers made in the eight Lo experimental
"Welborn runs" identified above have properties shown in the
Table 1 (see unnumbered page 23).
17. 	For the purpose of deciding Bamberger Preliminary
Motion 4, the following facts have been assumed, albeit not
necessarily found to exist):
a. 	One skilled in the art would understand the
Cheruvu claim limitation of "a M /M 	of from	w 	n
- 23

b.
about [5] 2.5 to about 3.0" to mean "a M /M 	of	w 	n
from 2.3 to 3.3" (BX-1138, page 140:8-12).
One skilled in the art would understand the
Cheruvu claim limitation "MFR of 15 to
about [6] 20" to mean " MFR of 15 to 21"
c.
d.
(BX-1008, page 47:22 through 48:20).
The products produced in the Lo experiments
and gas-phase as-synthesized polymers
described by Welborn are "dry" (BX-1074,
page 292:17 through 293:10).
The gas-phase polymerization described by
Welborn does not include the use of a
solvent. 	Hence, the gas-phase as-synthesized
polymers described by Welborn are
"solvent-free."
5 	The assumption makes it unnecessary for us to determine whether the
"intrinsic evidence" with respect to the word "about" is ambiguous. 	Cheruvu
is prevailing on Bamberger Preliminary Motion 6 and therefore the assumption
does not harm Cheruvu.
6 	The assumption makes it unnecessary for us to determine whether the
"intrinsic evidence" with respect to the word "about" is ambiguous. 	See n.5,
supra.

Table 1
Run 	catalyst 	type of 	density 	MFR 	Average 	Zr 	M /Mn	w
4086 	polymerization 	gm/cc 	particle size 	Content
in 	Fm 	ppm
107 	Welborn A-105 	slurry 	0.934 	34.9 	64.8 	5.1
108 	Welborn D-106 	slurry 	0.919 	18.46 	9.4 	2.8
109 	Welborn D-106 	slurry 	0.928 	22.16 	0.018 	452.29 	7.9 	3.0
111 	Welborn D-106 	slurry 	0.926 	18.81 	0.016 	397.78 	4.1 	2.9
118 	Welborn D-115 	slurry 	0.927 	20.43 	0.014 	350.76 	5.4 	3.1
121 	Welborn D-115 	slurry 	0.929 	24.09 	11.3 	2.1
122 	Welborn D-115 	gas 	0.949 	n/r7
123 	Welborn D-115 	gas
110 	Mobil 4086-064 	slurry 	0.918 	18.16 	0.017 	423.05 	1.0 	n/r8
The "A-105" and "D-106" and "D-115" in the catalyst column refer to the number
used by Mobil to identify the particular Welborn catalyst in the Lo laboratory
notebooks (see, e.g., BX-1011, page MOC-099973, near the top of the page under
"Cat:" which then identifies in handwriting "4086-105"). Welborn A and Welborn
D mean Examples A and D of Welborn.
The Table 1 figures in bold are not within the range for that property as
set out in Cheruvu claim 34 (it being noted that Cheruvu claim 34 does not
contain a limitation to Zr content.
The Speed testimony--Part 1
18. 	Dr. Charles S. Speed provided testimony on behalf
of Bamberger (BX-1096)
19. 	Dr. Speed rendered a first opinion that the silica
of the Welborn catalyst has reactive hydroxyl groups (BX-1096,
7 	A blank space or "n/r" means not reported. 	According to Dr. Lo, the
MFR could not be meaningfully determined (BX-1007, page 063) due to high
molecular weights and for other reasons.
8 	Mobil GPC (gel permeation chromatography) analysis for Run 4086-110
was not included by Bamberger in Bamberger Exhibit 1141.
- 25

page 2, ¶ 8; BX-1143 [book authored by Dr. R. K. Iler], page 639;
BX-1034, page 1).
20. 	Dr. Speed's first opinion is found to be credible
and is supported by objective data in Iler (BX-1143).9
Accordingly, the silica of the Welborn catalyst has reactive
hydroxyl groups.
21. 	Dr. Speed rendered a second opinion along the
following lines (BX-1096, page 4, ¶ 15) (emphasis ours):
[a]s of March 25, 1992, it was known that the catalysts and
processes described in *** Welborn *** would result in
ethylene alpha-olefin copolymers having a particle size and
a bulk density within the ranges claimed in the Cheruvu
patent, i.e., "an average particle size of 0.015 to 0.035
3	
inches, and a settled bulk density of from 25 to 36 lb/ft ."
Such a bulk density and average particle size are typical
for copolymer particles made in a commercial gas-phase
reactor.
22. 	Dr. Speed's second opinion is not entitled to
much, if any, weight with respect to settled bulk density.
Dr. Speed does not refer to any documentary prior art in
rendering his second opinion. 	Dr. Speed points to no evidence
Bamberger also relies on Hockey, The Surface Properties of Silica
Powders, Chemistry and Industry, pages 57-63 (1965). 	Bamberger, however, does
not point to any page, column and line. 	We decline to conduct a search in the
first instance through Hockey to determine whether Bamberger's reliance on
Hockey is justified.
- 26
9

that the reaction conditions in the Welborn gas-phase reactor are
those in "a commercial gas-phase reactor" mentioned in his
testimony. 	Dr. Speed's use of the language "typical" also leaves
some doubt as to whether, in the case of the Lo experiments
attempting to duplicate the Welborn process, the settled bulk
density recited in Cheruvu claim 34 was obtained.
23. 	Dr. Speed rendered a third opinion along the
following lines (BX-1096, page 6, ¶ 19):
In a gas-phase polymerization in which a supported
catalyst is used, polymer morphology[10] is dependent on the
morphology of the catalyst support. 	The use of a generally
spherical or round-shaped silica particle as a catalyst
support in a gas-phase copolymerization of ethylene with an
alpha-olefin typically results in generally spherical-shaped
polymer particles. 	I am familiar with Davison 948[11] and
Davison 952[12] silicas. 	Both of those silicas are
high-surface area silicas that are generally spherical or
10 	"Polymer morphology" means "the structure, arrangement, and physical
form of polymer molecules. 	Stevens, Polymer Chemistry, page 70 (2d ed. 1990).
Polymer morphology would include, among other things, voids in polymer
granules, i.e., porosity of those granules (see, e.g., BR-4188:21-24).
11 	Davison 948 silica is described as having been used by Dr. Howard C.
Welborn, Jr., in certain experiments discussed, infra. 	See, e.g., CX-3, page
44 under "Supported catalyst preparation."
12 	Both Cheruvu (col. 3, lines 41-42) and Welborn (col. 11, line 23)
describe the use of Davison 952 silica as a suitable silica carrier to make
the catalyst used to produce their respective polymers. 	The same silica was
used in the Mobil experiments (BX-1007, pages 056-057) discussed in Table I.
- 27

round-shaped in appearance. 	Use of either of these
materials as a catalyst support in a commercial gas-phase
polymerization results in generally spherical or
round-shaped polymer particles.
24. 	Dr. Speed's third opinion is found to be credible
and is supported by objective evidence. 	The Cheruvu and Welborn
patents both describe the use of the same silica support. 	The
same silica support was used in the Lo experiments leading to the
declaration filed in the PTO.
25. 	Welborn as-synthesized polymers made by using a
catalyst comprising a silica carrier based on Davison 952 would
be spherical.
26. 	Dr. Speed does not provide any convincing
testimony that the Welborn as-synthesized polymers are
"non-porous."
Cheruvu product claim 22
27. 	Cheruvu claim 22 reads (indentation and paragraph
numbering ours):
An as-synthesized composition which is
(1) 	dry and
(2) 	solvent-free and
comprises spherical, non-porous particles, which has
[sic--have]
- 28

(a) 	an average particle size of 0.015 to 0.035
inches, and
(b) 	a settled bulk density of from 25 to 36
3	
lb/ft , and
which is a copolymer of ethylene and an alpha olefin of 3 to
10 carbon atoms,
(i) 	having a density of 0.900 to 0.929,
(ii) 	MFR of 15 to about 20, and
(iii) 	containing 0.1 to 2 ppm Zr.
28. 	Cheruvu dependent claim 33 reads:
The composition of claim 22, wherein the copolymer is
characterized by M /M 	which ranges from 2.5 to 3.0.	w 	n
29. 	Cheruvu product claim 22 differs from Cheruvu
product-by-process claim 35 essentially
a. 	in requiring that the zirconium content of
the product be 0.1 to 2 ppm and
b. 	it does not contain a limitation with respect
to M /M .	w 	n
30. 	Cheruvu claim 33 contains a M /M 	limitation.	w 	n
The Speed testimony--Part 2
31. 	Dr. Speed rendered a fourth opinion along the
following lines (BX-1096, page 5, ¶ 17):
- 29

From the standpoint of physical properties, there is no
difference between an ethylene alpha-olefin copolymer
"containing 0.1 to 2 ppm Zr" and an ethylene alpha-olefin
copolymer containing up to 10 ppm Zr.
32. 	Dr. Speed's fourth opinion is not consistent
with the results of the Lo experiments (upon which Bamberger
has bottomed its preliminary motion). 	In the Lo experiments,
Run 4086-109 resulted in a polymer with a zirconium content of
7.9 (which is within "up to 10") and an MFR of 22.16 (which is
not within the MFR required by Cheruvu claim 22), whereas
Run 4086-110 resulted in a polymer with a zirconium content of
1.0 (which is within "0.1 to 2") and an MFR of 18.16 (which is
within the MFR required by Cheruvu claim 22).
33. 	Dr. Speed's fourth opinion will not be given much,
if any, weight.
34. 	Dr. Speed rendered a fifth opinion along the
following lines (BX-1096, page 5, ¶ 18):
As of March 25, 1992 [the critical date as to Cheruvu],
it was known that the amount of zirconium in a copolymer
could be reduced by one or more of a number of known
techniques. 	For example, it was known that if the partial
pressure of the ethylene was increased during the
polymerization, catalyst productivity would increase ***.
- 30

It also was known that if the reaction was allowed to
continue for a longer period of time, the amount of
copolymer produced per pound of catalyst would increase ***.
Furthermore, it was known that when a small-scale
polymerization like those described in Welborn examples is
scaled-up to commercial scale, the amount of impurities in
the system can be controlled at a lower level ***. 	Finally,
it was known that the catalyst activity in terms of grams of
polymer produced per gram of zirconium could be increased by
increasing the Al:Zr ratio of the catalyst. 	Again, this
increase in catalyst activity would lead to a decrease in
the amount [of] residual zirconium in the copolymer. 	It was
known that one or more of these techniques could be used to
increase catalyst productivity, thereby reducing the amount
of residual zirconium from about 10 ppm to "0.1 to 2 ppm" in
the "as-synthesized composition."
35. 	No documentary evidence has been called to our
attention to support of Dr. Speed's fifth opinion. 	There is
objective evidence in the record which may be partially contrary
to Dr. Speed's fifth opinion.13 	More important, Dr. Speed does
13 	We have found on our own that increasing the Al:Zr ratio from (54:1)
in Welborn run 14126-134 to (100:1) in Welborn run 14126-147, (1) appears to
have increased the yield from 97.0 grams to 122.1 grams, but (2) contrary to
the opinion expressed by Dr. Speed, increased (not decreased) the Zr content
from 1.17 ppm to 1.68 ppm. 	See Dr. Welborn's runs as discussed infra at
Findings 39-42.
- 31

not say why one having ordinary skill in the art would want to
have reduced, or would have been motivated to reduce, zirconium
content to a level of "0.1 to 2 ppm." 	We decline to give Dr.
Speed's fifth opinion much weight, particularly given that he
also believes that there is no difference between the properties
of polymers containing 10 ppm zirconium and the properties of
polymers containing "0.1 to 2 ppm" zirconium.
Dr. Lo's Table 2
36. 	In his testimony, Dr. Lo sets out the zirconium
content of the polymers produced in Examples 1-3, 3A and 4-10
of Welborn. 	The zirconium content ranges from a low of 61 ppm
for Example 7 to a high of 846 ppm for Example 5 (CX-1, page 21,
Table 2).
37. 	Bamberger does not challenge the correctness of
Dr. Lo's zirconium contents as set out in Dr. Lo's Table 2.
The Welborn declaration
38. 	The file wrapper of the Welborn patent is in
evidence (CX-3).
- 32

39. 	Included in the Welborn file wrapper is a
declaration (CX-3, pages 43-47) of Dr. Howard Curtis Welborn,
Jr., deceased (BX-1074, page 338:12-14).14
40. 	Dr. Lo, reviewing two runs reported in Table 1 of
the Welborn declaration
a. 	14126-134 supported catalyst and
b. 	14126-147 supported catalyst.
41. 	Dr. Lo, agreed that the polymers described in
these two Welborn runs contain zirconium contents of 1.17 ppm
(BX-1074, pages 341:18 through 342:13) and 1.68 (BX-1074,
pages 343:17-19).
42. 	Some of the properties of the two Welborn runs
discussed above are shown in Table 2.
14 	The Welborn file wrapper was introduced in evidence during an
evidentiary hearing which took place on July 28, 1997, in connection with
Bamberger Preliminary Motion 1. 	The file wrapper was offered in evidence by
Cheruvu. 	Initially a question was raised by a member of this merits panel
(the only member present at the evidentiary hearing) as to the admissibility
of the declaration, given it could not be cross-examined. 	Ultimately the
declaration was admitted because Cheruvu placed it in evidence and Bamberger
did not object (BX-1074, pages 339:16 through 341:11). 	Bamberger's use of the
declaration was on re-direct after Cheruvu "opened the door." 	In any event,
the declaration is clearly admissible for the limited purpose of showing what
is described in the Welborn patent file. 	We have considered the declaration
only for what is described therein.
- 33

Table 2
Welborn 	Zr 	Al/Zr 	Yield 	Morphology 	M /M	w 	n
Run No. 	Content 	ratio 	grams
ppm
14126-134 	1.17 	54 	97.0 	Free flowing 	1.9415
polymer
granules
14126-147 	1.68 	100 	122.1 	Free flowing 	2.3416
polymer
granules
)
)
)
)
)
)
)
)
)
)	
@ )	 )	 )	 )	 )	 )	 )	 )	 )	 )
43. 	There is no discussion in Welborn or the Welborn
declaration of zirconium content or of the significance of
zirconium content.
Difference between Cheruvu claims 22-33 and Welborn
44. 	Cheruvu claim 22 differs from Welborn at least in
that Welborn does not describe polymers having a zirconium
content of from 0.1 to 2.0 ppm.
H. 	Discussion
1. 	Burden of proof
Bamberger maintains that some of Cheruvu's claims are
unpatentable over the prior art. 	Bamberger is under a burden
15 	This M /M 	is not within the scope of Cheruvu product claims 33 and	w 	n
35. 	See Finding 17(a). 	Cheruvu claim 22 does not have as M /M 	limitation.	w 	n
16 	This M /M 	is within the scope of Cheruvu product claims 33 and 35.	w 	n
- 34

to prove its case (37 CFR § 1.637(a)) by a preponderance of the
evidence.
To establish anticipation, Bamberger must show that a prior
art reference describes each and every element of a claimed
invention. 	Hybritech Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1379, 231 USPQ 81, 90 (Fed. Cir. 1986), cert. denied,
480 U.S. 947 (1987).
The description in the prior art may be explicit or by way
of inherency. 	Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d 1043,
1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995) (for anticipation,
the description need not be express, but may anticipate by
inherency where it would be appreciated by one of ordinary skill
in the art); RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed,
468 U.S. 1228 (1984) (anticipation is established only when a
single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention).
A description in the prior art of a single species within
the claim is an anticipation of the claims. 	Titanium Metals
Corp. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir.
1985).
- 35

A description in prior art of any value within a claimed
range is an anticipation of the range. 	In re Wertheim, 541 F.2d
257, 267, 191 USPQ 90, 100 (CCPA 1976).
To establish unpatentability under 35 U.S.C. § 103,
Bamberger must satisfy the requisites set out in Graham v. John
Deere Co., 383 U.S. 1 (1966).17
To establish that a prior art reference inherently
anticipates a claim, Bamberger need not establish that every
limitation is expressly set forth in haec verba in the prior art
reference relied upon; it is sufficient if the prior art is so
worded that the necessary and only reasonable construction to be
given the disclosure of the prior art by one skilled in the art
is one which will lend clear support to each positive limitation
in the claim. 	Compare Binstead v. Littmann, 242 F.2d 766, 770,
113 USPQ 279, 282 (CCPA 1957). 	Inherency may not be established
by probabilities or possibilities. 	The mere fact that a certain
thing may result from a given set of circumstances described in a
prior art reference is not sufficient. 	If, however, the
disclosure is sufficient to show that the natural result flowing
from the operation as taught by the prior art would result in the
17 	We disagree with Bamberger's suggestion that "[a] claimed invention
is obvious [sic--unpatentable] *** if the differences between that invention
and the prior art would have been obvious to a person of ordinary skill in the
art" (Paper No. 83, page 11). 	Rather, claimed subject matter is unpatentable
under 35 U.S.C. § 103 only if the subject matter, as a whole, would have been
obvious notwithstanding any differences between the subject matter and a prior
art reference.
- 36

claimed subject matter, the description in the prior art
disclosure would be sufficient to establish anticipation through
inherency. 	Compare Hansgirg v. Kemmer, 102 F.2d 212, 214,
40 USPQ 665, 667 (CCPA 1939).
Bamberger may properly rely on ex parte experimental work
performed after the Welborn patent issued to establish inherency.
Spero v. Ringold, 377 F.2d 652, 658, 153 USPQ 726, 730 (CCPA
1967). 	See also Standard Oil Co. (Indiana) v. Montedison S.p.A.,
664 F.2d 356, 364, 376,18 212 USPQ 327, 334, 345 (3d Cir. 1981),
cert. denied, 456 U.S. 915 (1982).
2. 	Anticipation
In our opinion, Bamberger has not met its burden of
establishing anticipation. 	Bamberger necessarily has to concede
that the some of the property limitations of Cheruvu claims 22
and 34 are not described in haec verba in Welborn, because
Welborn does not describe in so many words all of the properties
recited in the Cheruvu claims or their numerical values.
To overcome the absence of an in haec verba in Welborn,
Bamberger turns to four Lo experiments. 	Cheruvu maintains that
the four Lo experiments are not representative of the Welborn
18 	In Standard Oil, an objection to the admissibility of ex parte
experiments was overruled where the party not present during the experiments
had an opportunity cross-examine the individuals conducting the experiments.
Here, Bamberger was not present during the ex parte experiments, but was able
to cross-examine. 	Moreover, and perhaps more significant, it is Bamberger who
attempts to rely in the first instance on the Lo experiments.
- 37

process, and calls attention to other Lo experiments which it
maintains are representative. 	Insofar as we can tell, Bamberger
does not challenge Cheruvu's argument that the other Lo
experiments are representative. 	Hence, we agree with Cheruvu
that if the Lo experiments are to be considered, all of Lo
experiments should be considered as a whole. 	When all of the Lo
experiments are considered, it is our view that Bamberger cannot
sustain its burden of demonstrating "inherency."
Initially, we question whether it would be appropriate to
take bits and pieces from one part of Welborn and combine them
with other bits and pieces from another part of Welborn to "come
up" with a "phantom polymer" not explicitly described by Welborn
and then measure the properties of the phantom polymer to
establish inherency. 	Rather, we believe Bamberger was under a
burden to show that (1) a polymer explicitly described by Welborn
has the Cheruvu properties or (2) operating under the Welborn
process conditions will necessarily result in a polymer having
the Cheruvu properties.
We start our analysis with an assumption (which we will
later undermine) favorable to Bamberger, viz., the Lo experiment
(see Table 1, supra) Runs 4086-108, -111 and -118 produced
polymers having the properties recited in Cheruvu process claim
34, and therefore also Cheruvu product-by-process claim 35.
However, it is a fact that Lo experimental Runs 4086-107, -109
- 38

and -121 (MFR too high) and -122 (density too high) produce
polymers which do not have all of the properties recited in the
same Cheruvu claims.
The question of whether a prior art reference inherently
describes a limitation in a claim is a question of fact. 	In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997). 	We cannot find that Welborn inherently describes a
process for making a polymer or a polymer within the scope of
Cheruvu claims 34 and 35. 	We have properties "results" for
polymers made in seven Lo experimental runs. 	The "results"
reveal a "score" of 4 do not have the properties to 3 have the
properties. 	From Bamberger's point of view, we are not
particularly impressed with the "score." 	Six of the Lo
experimental runs were performed in a slurry polymerization.
Cheruvu claim 34 calls for a gas-phase polymerization. 	The only
Lo experimental run performed in the gas-phase, and supposedly
duplicating Welborn, resulted in a density (0.949) which is
higher than the density limitation in Cheruvu claims 34 and 35.
Perhaps more important, however, is the reliability of the
evidence. 	Can it be said that (1) the necessary and only
reasonable construction to be given the description of the
process in Welborn by one skilled in the art is one which will
lend clear support to each positive limitation in the Cheruvu
claims 34 and 35 and/or (2) the natural result flowing from the
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operation as taught by Welborn would (not may) result in the
subject matter of Cheruvu claims 34 and 35? 	We think not. 	Too
much is left to chance, speculation and hope when only 3
experiments out of 7 experiments purporting to duplicate the
Welborn process produce a result which favors inherency.
Earlier, we made assumptions, which we now address. 	Insofar
as we can tell, Bamberger has not addressed the limitation in the
Cheruvu claims which requires the as-synthesized composition to
be "non-porous." 	In discussing the "spherical, non-porous
particles" limitation on page 6 of attachment A to the Supplement
to Bamberger Preliminary Motion 4, we find no discussion of
porosity. 	Nor, have we found any discussion of the "non-porous"
limitation in the Speed testimony.19 	Likewise, Bamberger has
failed to satisfy us that the Cheruvu settled bulk densities were
achieved in the Lo experiments. 	What might be typical for a
commercial gas-phase reactor has not been shown by Bamberger,
generally or through the testimony of Dr. Speed, to be typical
for a laboratory scale slurry reactor.
19 	In connection with other preliminary motions, Bamberger has pointed
to col. 2, line 67 through col. 3, line 4 of the Cheruvu patent: 	"When made
in the gas phase fluid bed process, on pilot plant scale, the product is dry
and solvent-free and comprises spherical, non-porous particles ***."
According to Bamberger, Cheruvu's statement constitutes an admission that gas
phase fluid bed processes result in non-porous particles. 	We disagree that
Cheruvu's "admission" is as broad as Bamberger suggests. 	At most, the
admission applies to polymers made in a "pilot plant" and then only to those
made in accordance with the Cheruvu invention. 	There is no admission by
Cheruvu that all gas phase products necessarily are "non-porous."
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20 	21	
There is a dispute between Bamberger 	and Cheruvu 	as to
whether the Welborn and Cheruvu catalysts are the same. 	Cheruvu
says that its catalyst has more reactive hydroxyl groups than the
Welborn catalyst. 	Bamberger responds by saying that there is no
numerical limitation of reactive hydroxyl groups in the Cheruvu
claims. 	We find it unnecessary to resolve the Bamberger-Cheruvu
dispute. 	However, the fact that there are no numerical
limitations for reactive hydroxyl groups in the Cheruvu claims
does not mean that Bamberger can avoid proving that other
numerical range polymer property limitations are obtained when
the Welborn process is duplicated. 	The extent of the reactive
hydroxyl groups on the respective Welborn and Cheruvu catalysts
may be the reason the Lo experimental results are not consistent.
Bamberger has failed to establish, by a preponderance of the
evidence, that Welborn anticipates any of Cheruvu claims 22-35.
3. 	Obviousness
Cheruvu claim 22 (from which Cheruvu claims 23-33 depend in
one form or another) requires the zirconium content to be "0.1 to
2 ppm."
According to Dr. Lo, the zirconium content of polymers made
in accordance with the examples of Welborn contain from 61 ppm
20 	See Bamberger Reply 4 (Paper No. 229), page 5.
21 	See Cheruvu Opposition 5 (Paper No. 129), pages 6-8.
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to 846 ppm zirconium (CX-1, page 21, Table 2) (see also Finding
36). 	There is no discussion of zirconium content in the Welborn
patent. 	Hence, the patent cannot per se serve to show that one
having ordinary skill in the art would have regarded zirconium
content as a significant matter at the time Welborn filed the
patent application which matured into the Welborn patent.
Furthermore, in presenting his declaration (see Findings 38-43),
Dr. Welborn did not discuss zirconium content or its
significance.
If we assume that Welborn describes polymers which comprise
granules which are "non-porous" and have a settled bulk density
3	
of from 25 to 36 lb/ft , then Cheruvu claims 22-33 differ from
Welborn in that Welborn does not describe Cheruvu's zirconium
content of 0.1 to 2 ppm. 	The question then becomes, would the
subject matter of Cheruvu's claims 22-33 have been obvious
notwithstanding Welborn's failure to describe Cheruvu's zirconium
content range? 	In this respect, we conclude that Bamberger has
failed to establish obviousness within the meaning of 35 U.S.C.
§ 103.
There is no discussion in the prior art relied upon by
Bamberger about zirconium and/or its significance. 	Dr. Speed's
conclusion that the polymer having 10 ppm zirconium is
essentially no different, in terms of other properties, that a
polymer having 0.1 to 2 ppm zirconium is not an explanation of
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why one skilled in the art would want, or be motivated, to change
the zirconium content of the Welborn examples of 61-849 ppm to
0.1-2 ppm, as required by Cheruvu claims 22-33. 	If it is Dr.
Speed's position that there is no practical difference between a
polymer having a zirconium content of 10 ppm and a polymer having
a zirconium content of 0.1 to 2 ppm, why would anyone have been
motivated, based on the prior art before us, to lower zirconium
content to 0.1 to 2 ppm?
To some extent Bamberger would say to the rationale
set out in the previous paragraph, "so what!" and would point
to the Welborn experimental results set out in Table 1
of the ex parte Welborn declaration (see Finding 42; CX-3,
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page 47).22 	Bamberger can make out a case that polymers made
in two of the Welborn experimental runs contain zirconium
contents of 1.17 and 1.68 ppm, which of course are within
Cheruvu's claimed range of 0.1 to 2. 	With the exception of
Cheruvu claim 33, Bamberger can also make out a case that
polymers made in those two experimental runs have a M /M 	which	w 	n
is the same as the polymers of Cheruvu claims 22-32, because
Cheruvu claims 22-32 do not have a M /M 	limitation.	w 	n 	Bamberger
arguably can make out a case that Welborn experimental run
14126-147, which achieved a M /M 	of 2.34 falls within the M /M	w 	n 	w 	n
range of about 2.5 to about 3.0 of Cheruvu claim 33, if the
assumption made in Finding 17(a)23 is adhered to. 	But, there are
numerous other differences between what Dr. Welborn explicitly
sets out in Table 1 with respect to the properties of the
polymers there described and the as-synthesized compositions of
Cheruvu's claims 22-33. 	Bamberger has not undertaken to explain
what those differences are and why the subject matter, as a
whole, of Cheruvu's claims 22-33 would have been obvious
notwithstanding those differences. 	We decline to search the
22 	We have assumed that the Welborn declaration in the file of the
Welborn patent is prior art under 35 U.S.C. § 102(b), given that the patent
issued more than one year prior to the date Cheruvu filed the application
which matured into the Cheruvu patent and a patent file is available to the
public on the date a patent issues. 	37 CFR § 1.11 (1988). 	Hence, as of
February 28, 1989, the Welborn declaration was available to the public.
23 	One having ordinary skill in the art would interpret "a M /M 	of from	w 	n
about 2.5 to about 3.0" to mean "a M /M 	of from 2.3 to 3.3."	w 	n
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record in the first instance to determine whether there is
evidence which might support a holding of obviousness based on
that evidence combined with the revelations in the Welborn
declaration.
Bamberger has failed to establish that the subject matter of
Cheruvu claims 22-33 or Cheruvu claim 35 would have been obvious
to a person having ordinary skill in the art within the meaning
of 35 U.S.C. § 103.
4. 	Additional observation
We close this chapter of the interference with the following
observation. 	We are totally puzzled as to why Bamberger did not
undertake experiments to duplicate the precise conditions in one
or more of the examples of Welborn and report the properties of
polymers obtained from duplicating those conditions. 	Compare
Standard Oil Co. (Indiana) v. Montedison S.p.A., 664 F.2d at
371-373, 212 USPQ at 340-342. 	There manifestly was a full
opportunity for Bamberger to have done so, and there was more
than ample reason to do so in this interference where Bamberger's
burden of proof (preponderance of the evidence) was lower than it
would have been in the civil action (clear and convincing).
Apparently, Bamberger elected to bottom its litigation strategy
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in this interference and in the Mobil v. Exxon civil action24
solely on the Lo experiments.
I. 	Order
Upon consideration of Bamberger Preliminary Motion 4, and
for the reasons given, it is
ORDERED that Bamberger Preliminary Motion 4 is denied.
______________________________
BRUCE H. STONER, Jr., Chief 	)
Administrative Patent Judge 	)
)
)
______________________________)
FRED E. McKELVEY, Senior 	) BOARD OF PATENT
Administrative Patent Judge 	) 	APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD E. SCHAFER 	)
Administrative Patent Judge 	)
24 	As we understand events, a trial in the civil action was imminent at
the time the interference was declared, or at least in June of 1997. 	Hence,
if any independent experimental work was ready for presentation at trial, it
manifestly could have been presented in this interference.
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