Appeal No. 1998-3272
Application 08/461,393
would have reasonably arrived at metallocene compounds which satisfy each of the limitations of
the claimed metallocene compounds encompassed by claims 23 and 36. See In re Payne,
606 F.2d 303, 315, 203 USPQ 245, 254-55 (CCPA 1979) (“An obviousness rejection based on
similarity in chemical structure and function entails the motivation of one skilled in the art to
make a claimed compound, in the expectation that compounds similar in structure will have
similar properties.”); see also In re Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941, 1943-44
(Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s
speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have
been motivated to make the modifications of the prior art salts necessary to arrive at the claimed
. . . salt.”); In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(in banc)
(“This court . . . reaffirms that structural similarity between claimed and prior art subject matter,
proved by combining references or otherwise, where the prior art gives reason or motivation to
make the claimed compositions, creates a prima facie case of obviousness, and that the burden
(and opportunity) then falls on an applicant to rebut that prima facie case.”); In re Grabiak,
769 F.2d 729, 731-32, 226 USPQ 870, 872 (Fed. Cir. 1985) (“[W]e have concluded that
generalizations should be avoided insofar as specific chemical structures are alleged to be prima
facie obvious one from the other. . . . [I]n the case before us there must be adequate support in
the prior art for the ester/thioester change in structure, in order to complete the PTO’s prima facie
case and shift the burden of going forward to the applicant.”).
Turning now to the evidence in the Winter (I) and (III) declarations, Winter (I) apparently
provides evidence of unexpected results with respect to the two species of appealed claim 18,
which contain particular “aryl” groups in the R6 position and zirconium dichloride as the central
transition metal atom, as the examiner cites this evidence as the reason for not rejecting this
claim (answer, page 6). We presume that the examiner has also not rejected appealed claim 17,
drawn to the subgenus of each of the claimed species containing zirconium, in view of such
results. In the absence of a statement to the contrary in the answer, we further presume that the
examiner also considers the results in Winter (III) to be unexpected because the only position
taken by the examiner for maintaining the ground of rejection even in view of such evidence is
that the same “is not commensurate in scope with the claims” (id.).
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007