Appeal No. 1998-3272
Application 08/461,393
component of a catalyst used in the preparation of syndiotactic polyolefins by polymerization or
copolymerization of olefins (specification, e.g., pages 2-5).
The references relied on by the examiner are:
Ewen et al. (Ewen) 4,892,851 Jan. 9, 1990
Kioka et al. (Kioka) 4,952,540 Aug. 28, 1990
Welborn 5,017,714 May 21, 1991
Winter et al. (Winter ‘381) 5,132,381 Jul. 21, 1992
Winter et al. (Winter ‘178) 5,416,178 May 16, 1995
The examiner has rejected appealed claims 23 through 27 and 29 through 39 under
35 U.S.C. § 103(a) as being unpatentable over Ewen in view of Winter ‘178,3 Welborn and
Kioka.4 The examiner has also rejected claims 17, 18 23 through 27, 29, 30, 32 through 35, 37
through 39, 415 and 42 under the judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1 and 2 of Winter ‘381 in view of Ewen.
Appellants state in their brief (pages 8 and 9) that the appealed claims “do not stand or
fall together” and group together claims 23, 29 through 35 and 38, separately group each of
claims 24 through 27, 36, 37, and group together remaining claims 17, 18, 41 and 42. It is
apparent from pages 17 through 22 of the brief, that appellants argue only the patentability of
claim 36, Group VI, over the prior art with specificity, and that no specific argument is directed
to claims 17, 18, 41 and 42, Group IX. Thus, we find that the appealed claims as grouped in the
two grounds of rejection stand and fall together, with the exception of claim 36, which is rejected
only under § 103(a), and thus decide this appeal based on appealed claim 23 for both grounds of
contains the notation “(Twice Amended). We do not find in the record a “Twice” amendment to
claim 23.
3 The examiner states that Winter ‘178 “has been substituted for its German equivalent,
“Hoechst,” German patent 3,762,067 (answer, page 3). “Hoechst” was relied on in the final
Office action (Paper No. 16) and discussed by appellants in the brief (e.g., pages 10-11).
Appellants did not object to the change in the applied reference in the reply brief.
4 The examiner acknowledges that “[t]he Hoel reference has been withdrawn” (answer, page 3),
but does not mention the Kaminsky et al. reference applied in the final Office action (Paper No.
16), in any respect. See brief, page 13. Thus, we assume that the examiner has dropped
Kaminsky.
5 The examiner recognizes that “claims 18 and 41 are duplicates” (answer, page 2). See Manual
of Patent Examining Procedure § 706.03(k), Duplicate Claims (8th ed., August 2001; 700-52).
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