Appeal No. 1998-3209
Application 08/338,284
judiciously from a genus of possible combinations of resin and salt to obtain the very subject
matter to which appellant’s composition per se claims are directed.”). Thus, the facts here are
not those of In re Baird, cited by appellants (brief, page 13; reply brief, page 4), wherein our
reviewing court found that the cited reference disclosed an estimated “100 million different
diphenols, only one of which is bisphenol A.” 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed.
Cir. 1994).
We further do not agree with appellants that Cohen fails to disclose the claimed
crystalline homo- and copolymers of propylene because the values specified in appealed claim 1
for the molecular weight distribution and for the melt index value are not shown in the reference
Examples (brief, pages 13-14). See Lamberti, supra. As we pointed out above, the claimed
ranges for these values overlap with the ranges taught by Cohen, and the burden is on appellants
to establish the criticality of the claimed ranges. While appellants point out that Example 14 of
Cohen applies an additional electron donor (brief, page 14), it is clear that such a catalyst
ingredient is not excluded by the claim in view of the phrase “a catalyst comprising” as we have
construed it above. In similar manner, appellants’ arguments with respect to the “batch”
operations taught by Cohen (reply brief, page 3 n.1) are not convincing because the broad
limitation “sequential polymerization” includes “batch” operations, and in any event, the
contentions advanced are not supported. See In re Lindner, 457 F.2d 506, 508, 173 USPQ 356,
358 (CCPA 1972) (“This court has said . . . that mere lawyers’ arguments unsupported by factual
evidence are insufficient to establish unexpected results. [Citations omitted.]”)..
We reiterate here that the appealed claims are product-by-process claims and thus
encompass products made by other processes even though the process limitations specified in the
claims is given weight with respect to defining the product (see reply brief, page 2). Thus, the
teachings of Cohen as a whole clearly would have led one of ordinary skill in this art to the
claimed crystalline homo- and copolymers of propylene such that it is not necessary to modify
the teachings of Cohen by any other reference or knowledge in the art, as was the case in In re
Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991), or to rely on aspects of the claimed
invention to support the ground of rejection, as was the case in In re Ochiai, 71 F.3d 1565, 37
USPQ2d 1127 (Fed. Cir. 1995), upon which appellants rely (brief, page 14; reply brief, page 2).
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