Appeal No. 1997-4099
Application No. 08/345,343
The Examiner appears to argue that it would have been “obvious to try” two different
organoaluminum halides using the sequential contact procedure of Hoff in the process of
Kondo. “Obvious to try” is the proper standard for obviousness where the prior art relied
upon contains a detailed enabling methodology, a suggestion to modify the prior art to
produce the claimed invention, and evidence suggesting the modification would be
successful. In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680-81 (Fed. Cir.
1988). The prior art cited on this record does not detail an enabling methodology or a
suggestion to modify the prior art. The Examiner has not established that one of ordinary
skill in the art would have considered Hoff’s advantages, achieved by equal portion addition
of the same alkyl aluminum halide precipitant in multiple stages, would apply to the
addition of one type of alkyl aluminum halide in one stage and a different type of alkyl
aluminum halide in a separate stage. The combined teachings of the references does not
provide enough information that would give the hypothetical person of ordinary skill in the
art a reasonable expectation of success that
the addition of one type of alkyl aluminum halide in one stage and a different type of alkyl
aluminum halide in a separate stage would provide the benefit asserted by the Examiner
which was increased particle size of the catalyst and increased particle size of the produced
polymer. Accordingly, we find that the initial burden of establishing the prima facie
obviousness of the claimed subject matter has not been met.
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