Appeal No. 2004-1829
Application No. 09/887,273
Calgene, 188 F.3d 1362, 1371, 52 USPQ2d 1129, 1135 (Fed. Cir.
1999). That is, even “a considerable amount of experimentation
is permissible, if it is merely routine, or if the specification
in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should
proceed...” Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
Contrary to the examiner’s belief, the subject matter on
appeal does not “include the use of any transition metal
coordination catalyst.” Rather, the claim limitation
“transition metal containing coordination polymerization
catalyst” must be considered in the context of the claimed
subject matter as a whole, which requires the production of a
polyolefin having the specified properties. To the extent that
a transition metal compound, under polymerizing conditions, does
not produce a polyolefin having the specified properties, it is
not encompassed by the appealed claims.
In addition, the present specification contains extensive
guidance in the form of nearly five hundred pages of disclosure
including hundreds of working examples. Given this extensive
guidance as well as the high level of skill in the art, which
the examiner readily admits (answer at 7), the examiner has not
adequately established on this record that one of ordinary skill
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