Appeal No. 2000-1822
Application 08/679,538
(Stevens ‘815),3 and under 35 U.S.C. § 103(a) as being unpatentable over Kawasaki et al.
(Kawasaki),4 optionally in view of Tsutsui et al. (Tsutsui) and further in view of Stevens ‘815.5
We find that, when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Hyatt, 211 F.3d 1367, 1372,
54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), the plain language of appealed claim 1, representative of the appealed claims, requires
that the claimed process for preparing “an ethylene/α-olefin/diene monomer elastomer having a
density of from about 0.850 g/cm3 to about 0.895 g/cm3” comprises at least the steps of
contacting in a first reactor, the three required monomers, an activated “metallocene complex” as
defined wherein the metal is “bound in an η5 bonding mode to,” inter alia, a cyclopentadienyl
group, and a solvent in such manner as to obtain a first elastomeric product at a concentration of
from about 1 to about 15 weight percent; contacting in a second reactor, a product stream from
the first reactor, the three required monomers, an activated “metallocene catalyst” as defined,
which can be the same or different than that in the first reactor, and solvent in such manner as to
obtain a second elastomeric product at a concentration of from about 2 to about 30 weight
percent; and subjecting the elastomeric product from the second reactor to a first stage and then
a second stage anhydrous solvent recovery operation wherein the concentration of the elastomeric
product is increased as specified.
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics,
3 Stevens ‘815 is referred to in the answer as “EP ‘815.”
4 Kawasaki is referred to in the answer as “EP ‘945.”
5 Answer, pages 4-10. The examiner withdrew Pfeiffer from the first ground of rejection
(answer, pages 2-3). The examiner has also withdrawn all of the “Examiner Notices” in both
grounds of rejection (id., pages 4 and 8).
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