Appeal No. 2000-1822
Application 08/679,538
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
On this record, we must agree with appellants that the examiner has not made out a prima
facie case of obviousness in the first ground of rejection. We find that Stehling discloses
“polymer blends of crystalline interpolymers, such as LLDPE” (page 1, lines 2-3; emphasis
supplied), wherein “[c]ontemplated blend components generally include elastomer blend
components in the density range of about 0.85-0.900 g/cm3” and three other classes of blend
components of higher densities (page 6, lines 21-23; emphasis supplied), all of which can be
prepared with a variety of monomers, including ethylene, alpha-olefins and dienes (page 6, line
31, to page 7, line 10) in the presence of a metallocene catalyst (pages 12-17), and wherein “the
blends [of crystalline interpolymers] may be made by direct polymerization, without isolation of
the blend components, using, for example, two or more catalysts in one reactor, or by using a
single catalyst and two or more reactors in series or parallel” (page 18, lines 29-33; emphasis
supplied). Based on this meager evidence, which is essentially all that the examiner has relied on
from Stehling (answer, pages 4-5), we agree with appellants that “[w]hile the breadth of the
teachings of [Stehling] allows for the preparation of an EPDM elastomer using a metallocene
catalyst in two reactors connected in series (it does not provide for anhydrous solvent stripping),
it does not provide any direction to do so” (brief, page 7; emphasis in the original). Indeed, we
find no teaching or inference in the other three references relied on in this ground of rejection
which would have supplied the direction, that is, the objective teaching, suggestion or
motivation, leading one of ordinary skill in this art to each and every limitation of the claims,
with or without Stehling.
We also agree with appellants that the examiner has not made out a prima facie case of
obviousness in the second ground of rejection. Indeed, we determine that the disconnected
teachings of Kawasaki relied on by the examiner are even less relevant to the claim limitations
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