Appeal 2007-0075
Application 10/759,299
employing methyl aluminoxane, as taught by Tsujimoto, as part of the
polymerization catalyst system of the type described in Iketmatsu ‘103 or
‘406. See, e.g., In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82
(CCPA 1975)(“Expected beneficial results are evidence of obviousness of a
claimed invention just as unexpected results are evidence of
unobviousness”). Any additional benefits in the improvement of other
properties of the Appellants’ conjugated diene polymers would have
naturally followed from the suggestion of Ikematsu ‘103 or ‘406 and
Tsujimoto. Ex parte Obiaya, 227 USPQ 58, 60 (B. pat. App. & Int. 1985)
(the recognition of another advantage flowing naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
difference would otherwise be obvious); see also In re Nolan, 553 F.2d
1261, 1267, 193 USPQ641, 645 (CCPA 1977) (the Appellants have the
burden of showing that any newly discovered advantages outweigh the
known advantages expected by one of ordinary skill in the art).
Second, we find that the Appellants have not demonstrated that the
showing in the Declaration is reasonably commensurate in scope with the
appealed claims. See In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289,
296 (CCPA 1980). While Run 1 representing the claimed invention is
limited to polymerizing a specific diene with a specifically prepared and
aged polymerization catalyst containing, inter alia, specific rare earth metal,
organoalumnium and halogenated silicon compounds under a particular
polymerization condition and reacting the resulting polymers with a specific
coupling compound, the appealed claims are not so limited. (See
Specification 37-38 and the Declaration 1-4). The Appellants have not
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