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 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007