Appeal No. 1998-3272
Application 08/461,393
groups, does not provide a reasonable basis on which to predict the behavior of the great number
and variety of metallocene compounds encompassed by the claims. See, e.g., In re Clemens,
622 F.2d 1029, 1035-36, 206 USPQ 289, 295-96 (CCPA 1980); In re Greenfield, 571 F.2d 1185,
1189, 197 USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358
(CCPA 1972).
Therefore, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Ewen, Winter ‘178,
Welborn and Kioka with appellants’ countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by appealed claims 23
through 27 and 29 through 39 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
We now consider the ground of rejection of appealed claims 17, 18 23 through 27, 29,
30, 32 through 35, 37 through 39, 41 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 do not contest the examiner’s finding that the metallocene
compounds containing zirconium and titanium as the central transition metal atom
encompassed by the appealed claims would have been prima facie obvious over the
metallocene compounds containing hafnium as the central transition metal atom, set forth in
claims 1 and 2 of Winter ‘381, which are drawn to a process for the preparation of a
syndiotactic polymer, in view of the disclosure of these three transition metals as the central
atom in the metallocene compounds of Ewen which are stereorigid-chiral compounds
containing bridged, different cyclopentadienyl groups (brief, pages 16-17; answer, page 8).
Instead, appellants submit that because the examiner required restriction in the present
application in the Office action of October 16, 1995 (Paper No. 6) between metallocene
compounds and a polymerization process that were then claimed, on the basis “that these
claims were patentably distinct from each other and required the applicants to elect between”
these two sets of claims, “[t]he Examiner cannot restrict claims out and then proceed to reject
these restricted claims under double patenting when the Examiner has required restriction”
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