Ex Parte SHAMSHOUM et al - Page 9



              Appeal No.  1999-1833                                                                         9                
              Application No. 08/480,728                                                                                     

              6.  See In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983);  In                            
              re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971). It is well settled that                           
              "[O]bjective evidence of nonobviousness must be commensurate in scope with the claims."                        

              (quoting In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972);  In re                               
              Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979) ("The evidence                                        
              presented to rebut a prima facie case of obviousness must be commensurate in scope with                        
              the claims to which it pertains.").                                                                            
              The evidence submitted is limited to 6 examples directed to the combination of an                              
              additive with a catalyst.  The specific catalyst is undisclosed.  We find the examples are                     
              directed to a single trialkyl aluminum compound, i.e., triethylaluminum.  We find that the                     
              examples are directed to a single external electron donor cyclohexylmethyldimethoxy-                           
              silane.  We find that the ratio of lithium compound to transition metal is 0.2 to 1.0.  The                    
              claimed subject matter however, is directed to an entire class of catalyst, as opposed to the                  
              single undisclosed catalyst utilized in Examples 1 to 6.  In addition, the claimed subject                     
              matter is directed to electron donors falling within the class having the general                              

              formula SiRm(OR’)4-m.  We further find that the claimed subject matter is directed to the                      
              polymerization of olefins, whereas Example 1 to 6 is directed to the polymerization of                         
              propylene.  It cannot be determined from the data submitted that an increase in molecular                      


              weight and a decrease in xylene solubles would result from the utilization of other catalysts,                 







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