Appeal No. 2001-0968
Application No. 08/894,423
based on inherency under 35 U.S.C. § 102 or on obviousness under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art products.
Best, 562 F.2d at 1255, 195 USPQ at 433-34.
Although Dietz's Catalyst 4 is made by using n-hexane, as
distinguished from an aromatic hydrocarbon or a halogenated
hydrocarbon as recited in appealed claim 1, we again point out
that the appealed claims do not require the contact of the
titanium compound with the specified organic solvent, i.e. the
aromatic hydrocarbon or halogenated hydrocarbon. Also, nothing
in the record, including the experimental data in the present
specification, establishes that the use of an aromatic or
halogenated hydrocarbon yields a substantially different
catalyst, much less any unexpected result, relative to the use of
n-hexane.
Even assuming that the use of the recited solvents imparts a
structural difference relative to n-hexane, Dietz teaches the use
of an aromatic hydrocarbon (e.g., benzene or toluene) as the
solvent. Under these circumstances, one of ordinary skill in the
art would have found it prima facie obvious to replace the n-
hexane of Example 1 with benzene or toluene, with the reasonable
expectation that these solvents would provide substantially
similar results relative to n-hexane as expressly taught by
Dietz. In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52
(Fed. Cir. 1985)(holding that the use of nitrogen-containing
titanium compounds in a Ziegler-Natta catalyst in lieu of other
titanium compounds would have been prima facie obvious to one of
ordinary skill in the art); In re Mayne, 104 F.3d 1339, 1342-43,
41 USPQ2d 1451, 1454-55 (Fed. Cir. 1997)(holding that the
substitution of a peptide for another functionally equivalent
peptide in recombinant DNA art would have been prima facie
obvious to one of ordinary skill in the art).
As to the amount of alcohol, Dietz teaches that the amount
of alcohol may be as little as 2 moles per more of magnesium
dichloride. Accordingly, we determine that one of ordinary skill
in the art would have found it prima facie obvious to use an
amount as low as 2 moles of alcohol per mole of magnesium
dichloride, as expressly suggested in the reference. In re
Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997)(explaining that a claimed invention is rendered prima facie
obvious when the teachings of a prior art reference discloses a
range that touches or overlaps the range recited in the claim).
Claim 2 recites the presence of "up to 15 mmoles" of
"chemically not combined water" per gram of metal oxide. We hold
that the recitation "up to 15 mmoles" reads on 0 mmole. Even if
a positive amount up to 15 mmoles had been recited, we determine
that the use of commercially available silicas in Dietz would
meet this limitation for the reasons discussed above with respect
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