Appeal No. 1998-3272
Application 08/461,393
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976).
We have carefully considered all of appellants’ arguments in the brief. Appellants
contend that neither Ewen or Winter ‘1788 discloses a preferred embodiment that shows a
bridging group R5 as required by appealed claim 23 and submits that “[Winter ‘178], like Ewen,
does not disclose nor teach that the bridge is” a number of listed bridging groups “where at least
one R6 is” one of a Markush group of aryl containing radicals (brief, pages 10-11). Thus,
appellants submit that there is no motivation in either reference to make the selection of the
bridging groups necessary to arrive at the claimed metallocene compounds and thus there is no
reason to combine the references for that purpose (id., pages 13-14). We cannot agree.
We initially observe that several of the bridging groups listed at the top of page 11 of the
brief are not substituted by an R6 substituent, which groups, such as “-O-”, are shown in Winter
‘178. Winter ‘178 further defines the R6 substituent(s) on the bridging groups as including aryl
groups, as we have pointed out above. Furthermore, the fact that no metallocene compound
containing a bridging group as specified in appealed claims 23 and 36 is exemplified by either
reference does not diminish the other clear teachings of each of the references. See generally,
In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“The fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.”).
In view of the common chemical structure and utility between the metallocene
compounds of Ewen and Winter ‘178, and the common direction in Ewen and Winter ‘178 to use
bridging groups that provide stereorigidity to the metallocene compounds for purposes of the
common utility as found by the examiner, there is ample direction to one of ordinary skill in this
art to use the bridging groups of the metallocene compounds of Winter ‘178 in the bridge
position of the metallocene compounds of Ewen in the reasonable expectation of obtaining
metallocene compounds having the same or similar properties. Accordingly, we are convinced
that one of ordinary skill in this art following the combined teaching of Ewen and Winter ‘178
8 We have considered appellants’ arguments with respect to “Hoechst” as applying to Winter
‘178 (see above note 3).
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