Appeal No. 95-2080
Application 08/053,965
catalyst components and catalysts containing the solid catalyst components encompassed by the
appealed claims.
Indeed, it is apparent that the scope of the appealed claims has changed over the course of
the prosecution in the present and ‘293 applications. We find that claim 1, couched in product-by-
process format, requires at least that an activated anhydrous MgCl /alcohol adduct solid support is
2
first treated with a combination of a specified titanium halide at least one halogen containing Hf, Zr or
Sc compound and then treated at least once with one specified titanium halide, halogen containing Hf,
Zr or Sc compound or a combination thereof in order to arrive at the claimed solid catalyst component.
Appellant discloses in the specification (e.g., page 6) that the manner in which the activated anhydrous
MgCl /alcohol adduct solid support is treated with the specified transition metal halide compounds
2
affects the activity of the catalyst. Thus, as a basic consideration, none of the references taken
singularly or as applied in either combination by the examiner, teaches or suggests a schedule for the
treatment of an activated anhydrous MgCl /alcohol adduct solid support with transition metal halide
2
compounds as specified in claim 1, such that it is inescapable that the references as combined by the
examiner taken as a whole would not have resulted in the claimed solid catalyst component. 4
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988). Thus, it is manifest that the only direction to
appellants’ claimed invention as a whole on the record before us is supplied by appellants’ own
specification.
The examiner’s decision is reversed.
Remand To The Examiner
This application is remanded to the examiner to consider whether claims 2 through 4 find
4Our consideration of claim 1 is sufficient to dispose of the issues presented by the applied prior art in
this appeal with respect to all of the appealed claims even though we note that product claim 1 and
process claim 5, as they stand on appeal (see supra note 2), are of different scope with respect to
limitations on process conditions and thus to the products prepared. We observe that claims 10
through 13 are drawn to catalysts containing the solid catalyst components of claims 1 through 4,
respectively.
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