Appeal No. 2001-0968
Application No. 08/894,423
substantiates the examiner's statement that the use of an
aromatic or chlorinated hydrocarbon solvent during the
preparation of Werner's titanium component (1) would lead to
"better solubility of magnesium chloride." Moreover, Zucchini
'961, Zucchini '840, and Banzi all relate to catalyst components
that are quite different in structure and composition from that
described in Werner. Significantly, the catalysts of the
secondary references are not supported on an oxide material as in
Werner. (Zucchini '961, column 1, line 57 to column 2, line 31;
Zucchini '840, column 1, lines 41-68; Banzi, column 3, lines 31-
61.) Absent evidence establishing that the use of an oxide
support material would not make any difference in the choice of
solvent, the examiner's proposed combination of references must
fall. Here, the examiner has failed to point to any specific
motivation, teaching, or suggestion supporting the combination of
references. In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453,
1459 (Fed. Cir. 1998) ("[T]he Board must explain the reasons one
of ordinary skill in the art would have been motivated to select
the references and to combine them to render the claimed
invention obvious."); In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best defense against
the subtle but powerful attraction of a hindsight-based
obviousness analysis is rigorous application of the requirement
for a showing of the teaching or motivation to combine prior art
references.").
We therefore hold that the examiner has not made out a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103.
The examiner's rejection under 35 U.S.C. § 103 of all the
appealed claims as unpatentable over Werner in view of Zucchini
'961, Zucchini '840, and Banzi is reversed.
New Grounds of Rejection
We cite the following new prior art reference, which is
listed on the attached "Notice of References Cited," Form PTO-
892:
Dietz 4,410,451 Oct. 18, 1983
Prior to discussing the new rejections, we analyze the scope
of certain terms recited in appealed claim 1. First, we observe
that claim 1 is drafted in product-by-process format, and that
the claimed solid catalyst component is obtained by reacting a
titanium compound with a support. The support, in turn, is
obtained by contacting a specified metal oxide with a solution
comprising MgCl2, a specified amount of alcohol, and a specified
organic solvent. On its face, however, the claim does not
require contact of the titanium compound with the specified
organic solvent. We must look at the product itself in
determining the patentability of the claim. In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)(explaining that
when a product recited in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is
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