Ex parte Campbell

Board of Patent Appeals and Interferences

Aug 8, 1997

07740529 (B.P.A.I. Aug. 8, 1997)

Application for patent filed August 5, 1991. 1
1
Paper No. 15
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte RICHARD E. CAMPBELL, JR.
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Appeal No. 94-3878
Application 07/740,5291
_______________
ON BRIEF
_______________
Before SOFOCLEOUS, GARRIS and OWENS, Administrative Patent Judges.
SOFOCLEOUS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from the final rejection of claims 1 to 12,
all the claims remaining is the application.
Claim 1 is illustrative and reads as follows:
1. A process for preparing polymers of vinyl aromatic
monomers having a high degree of syndiotacticity comprising
contacting at least one polymerizable vinyl aromatic monomer
Appeal No. 94-3878
Application 07/740,529
2
under polymerization conditions with a catalyst comprising
a metal complex corresponding to the formula:
L MX RBY , wherein:m n 3+ -
L is a delocalized B-bonding group or substituted group
containing up to 50 nonhydrogen atoms;
m is 0 or 1;
M is a metal of Group 4 of the Periodic Table;
X each occurrence is an inert, anionic ligand containing
up to 20 nonhydrogen atoms;
n is an integer greater than or equal to 1 and the sum of
m and n is one less than the valence of M;
R is hydrocarbyl, silyl, a combination thereof or a
substituted derivative thereof having up to 20 nonhydrogen atoms;
B is boron; and
Y is an inert covalently bound group having up to 40 atoms
and BY is a stable borane compound able to abstract an R group3
from a compound of the formula LMX R.m n
Claims 1 to 12 stand rejected under 35 U.S.C. § 112, first
paragraph, as being broader than the enabling disclosure.
We will not sustain this rejection.
An application disclosure which contains a teaching of the
manner and process of making and using an invention in terms which
correspond in scope to those used in describing and defining the
subject matter sought to be patented must be taken in compliance
with the enabling requirement of the first paragraph of 35 U.S.C.
Appeal No. 94-3878
Application 07/740,529
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§ 112 unless there is reason to doubt the objective truth of
statements contained therein. Fiers v. Revel, 984 F.2d 1164,
1171-72, 25 USPQ2d 1601, 1607 (Fed. Cir. 1993). It is incumbent
upon the examiner to explain why he doubts the truth or accuracy
of any statement in a supporting disclosure and to back up his
assertions with acceptable evidence or reasoning which is incon-
sistent with the contested statement. In re Marzocchi, 439 F.2d
220, 224, 169 USPQ 367, 370 (CCPA 1971). That some experimen-
tation is necessary does not preclude enablement; the amount of
experimentation, however, must not be unduly extensive. Atlas
Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1989). The fact that a claim
embraces some combinations which are inoperative does not
necessarily make the claim inoperative so long as the number of
inoperative embodiments does not become significant. Atlas Powder
Co. v. E.I. Du Pont de Nemours & Co., supra.
Here, the examiner contends that the disclosure is enabled
only for claims limited to metal complexes substituted with a
delocalized B-bonding group, i.e., where m = 1 in the formula
depicted in claim 1. The examiner urges that it would require
undue experimentation to ascertain which of appellant's metal
complexes lacking a delocalized B-bonding group, i.e., where
Appeal No. 94-3878
Application 07/740,529
4
m = 0 in the formula, would be operative in the claimed process,
and that from a structural and steric standpoint, those complexes
within the claimed formula where m = 0 are so different from those
complexes where m = 1 (the cyclopentadienyl metal complexes
disclosed in the examples of the appellant's disclosure) as to
preclude any reasonable prediction concerning their activity in
the claimed process. Referring to the limited disclosure of
metallocyclopentadienyl catalyst precursors, the examiner urges
that the notoriously high level of unpredictability and empiricism
associated with catalytic phenomena would render the disclosure
enabling only for those catalysts where m = 1.
The examiner, however, has failed to substantiate his
position with persuasive objective evidence or scientific
reasoning. He has not cited any evidence to show that one
skilled in the art would not have been enabled by the disclosure
coupled with information known in the art to practice the claimed
invention without undue experimentation. The examiner has not
explained how those complexes where m = 0 are so different from
those where m = 1 such that one skilled in the art, armed with
the supporting disclosure, would not be able to practice the
claimed invention.
Appeal No. 94-3878
Application 07/740,529
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Accordingly, the examiner's rejection of the appealed claims
is reversed.
REVERSED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

Appeal No. 94-3878
Application 07/740,529
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Richard G. Waterman
P. O. Box 1967
Midland, MI 48641-1967
MS/cam