Appeal No. 1999-1679 8
Application No. 08/851,742
Zucchini is relied upon only for its disclosure of ethyl benzoate as an electron
donor. See Answer, page 8. Zucchini however, is likewise directed to copolymers having
only minor amounts of ethylene. See column 3, lines 18-32.
Furthermore, the examiner relies upon Cowan to disclose ethyl benzoate,
appellant’s preferred electron donor, but admits that Cowan, “does use an alcohol during
the reaction of the magnesium chloride and titanium alkoxides.” See Answer, page 8.
Based upon the above findings, we conclude on this record that the examiner has failed to
establish a prima facie case of obviousness with respect to the claimed subject matter.
Based upon the above analysis, we have determined that the examiner's legal
conclusion of obviousness is not supported by the facts. "Where the legal conclusion [of
obviousness] is not supported by [the] facts[,] it cannot stand." In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), reh’g denied, 390 U.S. 1000 (1968).
DECISION
The rejection of claims 1, 3, 5 through 18, 20, 22 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Scata in view of Job is reversed.
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