Appeal 2007-0072
Application 09/945,861
The Examiner relies upon the evidence in these references:2
Sugimura (Sugimura ‘024) WO97/38024 A1 Oct. 16, 1997
Brookhart, III (Brookhart) US 6,103,946 Aug. 15, 2000
Sugimura US 6,136,743 Oct. 24, 2000
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) (Br. 4): claims 42 through 49 as unpatentable over Sugimura in
view of Brookhart (Answer 3). The Examiner states Sugimura ‘024 “has the
same WIPO and PCT serial numbers as those of [Sugimura], hence
[Sugimura] will be referred to since it is in English” (id.). Appellants do not
disagree with the Examiner’s reliance on Sugiyama in this manner.
Accordingly, the ground of rejection before us is based on the combined
teachings of Sugimura and Brookhart.
Appellants argue the claims as a group (Br. in entirety). Thus, we
decide this appeal based on claims 42 and 43. 37 C.F.R. § 41.37(c)(1)(vii)
(September 2004).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness of the
polymerization catalyst components encompassed by claim 1 over the
combined teachings of Sugimura and Brookhart.
2 The Examiner cites US 5,955,555 and US 2002/0058584 A1 under
Evidence Relied Upon but does not include these documents in the statement
of the ground of rejection, relying on the same in argument with respect to
the factual foundation of the ground of rejection (Answer 2, 3-4, and 4-5).
We will not consider these documents as reliance thereon in this manner is
inappropriate. See In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406,
407 n.3 (CCPA 1970); cf. Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd.
Pat. App. & Int. 1993).
3
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