Appeal No. 1997-0186
Application No. 08/314,568
the addition of any compounds in the formation of the
disclosed catalyst component other than those compounds
specifically recited in claim 1. Therefore, we interpret
claim 1 as limited to catalyst components produced solely by
the four steps recited therein. Consequently, the addition of
an electron donor as disclosed in EP '524 is excluded from the
claimed invention.
Next, we consider the obviousness of the claimed
invention in view of the teachings of EP '524. The examiner
appears to be relying on a per se rule to support the
rejection based on
35 U.S.C. § 103. Specifically, the examiner maintains that
"deletion of a component and its' concomitant function is not
unobvious" (Answer, p. 7). However, there are no per se rules
of obviousness. Rather, in an obviousness determination, each
case must be evaluated on its facts. See In re Ochiai, 71
F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995)
("reliance on per se rules of obviousness is legally incorrect
and must cease").
In view of the teachings of EP '524, one having ordinary
skill in the art would have recognized that the addition of an
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