Appeal No. 2001-2095 7
Application No. 08/872,659
8 groups, with the transition metals constituting Groups IIIB, to VIII and Groups IB and
IIB. The examiner should consider whether the disclosure in Nagy ‘660 relating to the
polymerization of ethylene “using transition metal catalysts with bidentate ligands,” is
sufficient to support the scope of M in the present application, in light of the disclosure in
Reichle that M is a metal selected from the group consisting of Group IIIB to VIII and
Lanthanide series elements. See Reichle, claim 1.
As to the limitation in claim 71 with respect to X being directed to “C6-14 aryl, C7-
20 alkaryl, C7-20 aralkyl,” the only basis in Nagy ‘660 is directed to X being “alkyl.” See
column 2, line 38. Accordingly, as to the species of “aryl” disclosed by Reichle and
unsupported in Nagy ‘660, Reichle would appear to be sufficient to establish a prima facie
case of obviousness with respect to the claimed subject matter. The examiner should also
consider whether the term “alkyl” provides support for the other identified species of X set
forth in this paragraph.
APPROPRIATE ACTION
We remand this application to the examiner for action consistent with the above.
As a final point, we emphasize that we have only considered the merits of the
examiner’s rejection to the extent of the record before us. As the appellants have admitted
on the record that, “[t]here is no question that there is a small but significant quantity of
claimed subject matter not identically described in the parent application.” Thus,
Appellants may not be entitled to their parent application filing date under 35 U.S.C.
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