Appeal No. 1998-3272
Application 08/461,393
The examiner points out that there is no evidence with respect to “any metallocene
containing a silicone bridge,” and that there is no basis in the record which establishes that such a
metallocene would reasonably be expected to behave differently from the compound in Example
B of Winter (I) which is disclosed in Ewen (id., pages 6-7). The examiner takes the “same”
position with respect to “metallocenes having combinations of R1, R2, R6 and R7 radicals that
have not been compared, e.g., phenylene methylene(cyclopentadienyl)(fluorenyl) zirconium
dihydride,” and further states that “none” of the other central transition metal atoms “have been
shown to produce similar results to those of zirconium” along with other substituents (id., page
7).
Appellants point out that each of the four additional metallocene compounds representing
the appealed claims presented in Winter (III) have different aryl containing bridging groups in
contending that the evidence is commensurate in scope with the rejected appealed claims (brief,
pages 15-16), and further state that they “believe” that the appealed claims are commensurate in
scope with such evidence, even though the basis for such belief is not set forth (e.g., brief, page
18). Appellants do not submit further argument with respect to this issue in the reply brief.
We find that there is no appealed claim that is limited to any of the species or a subgenus
of any such species shown in Winter (III) as is the case with appealed claims 17 and 18 and the
species compared in Winter (I). If such were the case, we would readily agree with appellants.
However, the examiner has pointed to a number of structural distinctions between the
claimed metallocene compounds tested in Winter (I) and (III) and other claimed metallocene
compounds, particularly with respect to the substitution of one transition metals for another in
the central transition metal position M1, and to the substitution of a non-carbon atom for a carbon
atom as the bridging atom(s) in the bridging group position R3 of the claimed metallocene
compounds. Appellants’ arguments and “belief” simply do not account for these structural
differences with respect to whether similar behavior would reasonably be expected.
Accordingly, in view the enormity of the scope of appealed claims 23 and 36 with respect
to these different structural variables, we must agree with the examiner that the evidence in
Winter (I) and (III) which is limited in scope to six closely structurally related metallocene
compounds containing zirconium as the central transition metal atom and hydrocarbyl bridging
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