Appeal No. 1997-0186
Application No. 08/314,568
electron donor compound is an essential step in the formation
of a catalyst component exhibiting outstanding catalytic
performance. Therefore, we find no motivation or suggestion
in EP '524 to eliminate the electron donor from the disclosed
process. For this reason, the rejection of claims 1-22 under
35 U.S.C. § 103 is reversed.
B. Obviousness-type double patenting rejection
Claims 1-22 are rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1-5 of U.S. Patent No. 5,244,853 to
Wang in view of Johnstone.
The sole argument advanced by appellants relates to the
propriety of the examiner's reliance on the Johnstone patent
in the rejection based on obviousness-type double patenting.
Specifically, appellants argue that "it is impermissible in
the instant fact situation to cite a second patent
[(Johnstone)] as a necessary part of an obviousness double
patenting rejection" (Brief, p. 6). We disagree.
The court in In re Longi, 759 F.2d 887, 892-93, 225 USPQ
645, 648 (Fed. Cir. 1985) explains the doctrine of
obviousness-type double patenting as follows:
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