Appeal No. 2001-0968
Application No. 08/894,423
unpatentable even if the prior art product was made by a process
that is different from the process recited in the claims).
Additionally, appealed claim 1 recites: "a metal oxide
containing hydroxyl groups." When we read this term in light of
the specification, we find that such metal oxides are obtained by
not subjecting commercially available support materials (e.g.,
silica SG332 from W.R. Grace) to any chemical or physical
treatment. (Specification, page 5, lines 7-11; Example 1.)
The Dietz Reference
Claims 1 through 4, 7, 9, 10, 12, and 13 are rejected under
35 U.S.C. § 103(a) as unpatentable over Dietz.
Dietz describes a catalyst component produced by swelling a
particulate magnesium dihalide (e.g., magnesium dichloride) with
a secondary or tertiary alcohol (e.g., 1-propanol), preferably in
the presence of a hydrocarbon diluent (e.g., an aromatic
hydrocarbon such as benzene or toluene), removing some or all of
the unreacted alcohol, and contacting the resulting product with
a titanium compound (e.g., titanium tetrachloride). (Column 1,
lines 5-27; column 2, lines 32; column 2, line 67 to column 3,
line 12.) The molar amount of alcohol per mole of magnesium
dihalide is said to be from about 2:1 to about 50:1, with the
amount of alcohol associated with the magnesium dihalide as
alcohol of crystallization generally varying from about 1 to
about 6. (Column 3, lines 31-40.) Dietz further teaches that a
diluent in particulate form (e.g., silica) can be admixed with
the magnesium dihalide and other catalyst components. (Column 4,
lines 48-57.)
In Example 1, Dietz describes a catalyst component obtained
by: admixing magnesium dichloride, a 21-molar excess of 1-
propanol relative to magnesium dichloride, silica, and n-hexane;
removing unreacted alcohol; and then reacting the product with
titanium tetrachloride. (Table Ia, Catalyst 4.) With respect to
the silica, Dietz does not teach any chemical or physical
treatment of the silica and thus, based on the specification
description discussed above, it is reasonable to presume that it
would necessarily contain surface hydroxyl groups. According to
Dietz, Catalyst 4 was combined with triethylaluminum cocatalyst
to polymerize ethylene. (Table Ia, Run 4P.)
Thus, we find that Dietz's Catalyst 4 reasonably appears to
be the same or substantially the same as the catalyst recited in
appealed claim 1, except for the amount of alcohol relative to
the amount of magnesium dichloride. It is well settled that when
a prior art product reasonably appears to be substantially the
same as a product disclosed in the prior art, the burden of proof
is on the applicants to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed
to the claimed product. In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-34 (CCPA 1977). Whether the rejection is
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