Appeal No. 1998-3272
Application 08/461,393
rejection, and on appealed claim 36 for the first ground of rejection. 37 CFR § 1.192(c)(7)
(1997).
We affirm both grounds of rejection.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief and reply brief for a complete
exposition thereof.
Opinion
In Appeal No. 93-2450 (see above note 1), a prior panel of this Board affirmed the
examiner’s decision finally rejecting appealed claims drawn to a process for the preparation of a
syndiotactic polyolefin utilizing a catalyst comprising a metallocene as the transition metal
component. The scope of the metallocene specified in the broadest claim involved in said prior
appeal is the same as present appealed claim 17, as the examiner points out in the present answer
(page 3). We note that a dependent claim involved in said prior appeal has the same scope as
present appealed claim 18 with respect to the metallocene compounds. The sole ground of
rejection advanced by the examiner in that appeal was under § 103(a) as being unpatentable over
Ewen in view of “Hoechst” (see above note 3), and the dispositive issue was “whether the . . .
metallocene . . . would have been obvious . . . in view of” this combination of references (Appeal
No. 93-2450, page 3).
In the present case, the examiner points out that there are several differences in the record
between the present and prior appeals with respect to the ground of rejection under § 103(a),
including that the present ground of rejection has not been applied to appealed claim 17 (answer,
page 3). We note that appealed claim 18 is also not so rejected. Accordingly, we consider
whether the claimed metallocene products are patentable over essentially the same prior art
applied in the prior appeal, but on the record of the present appeal. Cf. In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976).
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner (answer, pages 3-5) that, prima
facie, one of ordinary skill in this art would have found in the combined teachings of Ewen,
Winter ‘178, Welborn and Kioka the reasonable suggestion that that the bridging groups in the
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