¶155 CCPA
¶2*1010Dos T. Hatfield, Washington, D. C., Donald R. Johnson and Roger V. N. Powelson, Philadelphia, Pa., for appellants.
¶3Joseph Schimmel, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for the Commissioner of Patents.
¶4Before RICH, Acting Chief Judge, and Judges SMITH, ALMOND, and KIRKPATRICK*
¶7This appeal is from the decision of the Board of Appeals which affirmed the examiner’s rejection of claims 1-3, 6-9, 11 and 121 as “unpatentable over the combination of Hague et al.2 and Badische3 under 35 U.S.C. § 103,” as well as “for double patenting over Hague et al.”
¶8The invention relates to a three-component “Ziegler” catalyst composition consisting essentially of (1) amorphous titanium trichloride (TiCl3), (2) an alkylaluminum dihalide (A1RX2), and (3) methyl tetrahydrofuran (MTHF), as well as to a process of polymerizing certain 1-alkenes, such as propylene, with that catalyst. Appellant’s specification provides the following background information :
It is known that 1-alkenes may be polymerized in the presence of catalysts comprising a transition metal halide such as titanium chloride in combination with an aluminum alkyl or dialkyl aluminum halide such as triethyl aluminum or diethyl aluminum monochloride to form solid crystalline polymers having utility in the fabrication of molded articles, films, and fibers. However, it has not been found possible heretofore to use an alkyl aluminum dihalide as an active component of this type of catalyst system even though these dihalides are much less expensive than the alkyl aluminum compounds used thus far. Thus, Stuart and Khelghatian show in U.S. Patent 2,967,206 that alkyl aluminum dihalides in conjunction with titanium halides effect polymerization of propylene and higher 1-alkenes to oily polymers, but no solid polymers are disclosed therein as resulting from the use of this catalyst system.
It is an object of this invention to provide a coordination catalyst system utilizing an alkyl aluminum dihalide as the organometallic component of the catalyst which will polymerize *1011propylene and higher 1-alkenes to solid crystalline polymers in commercially attractive yields. [Emphasis supplied.]
¶9It appears from the examples set forth in the specification that the addition of MTHF to an amorphous TiCl3-ethyI aluminum dichloride catalyst composition results in an increased yield and rate of production of solid crystalline polypropylene when compared to the yields and rates upon employment of amorphous TiCl3-ethyl aluminum dichloride alone.4
¶10Hague discloses a catalyst composition consisting of (1) amorphous TiCl3, (2) an aluminum alkyl sesquihalide,5and (3) MTHF for use in polymerizing propylene. According to Hague, it was known in the art that “the combination of aluminum sesquihalides and transition metal chlorides will not polymerize propylene and higher alpha olefins to solid crystalline polymers.” Hague discloses that A12R3X3 in combination with amorphous, not crystalline, TiCl3 will produce solid polypropylene, but at such a slow rate as to be “commercially impracticable.” It was further found that the amorphous TiCl3 and A12R3X3 system may be complexed with tetrahydrofuran or MTHF to yield catalyst systems having commercially acceptable activities approaching those of systems employing the more expensive aluminum dialkyl monohalides.
¶11Recognizing that Hague does not employ an alkyl aluminum dihalide per se as a part of her disclosed catalyst system, the examiner turned to Badische who also discloses three component “Ziegler” catalyst compositions for use in polymerizing various olefins. A halide of the metals of groups 4A, 5A and 6A of the periodic system, which may be TiCl3 among many other things, is set forth as one component. The second is selected from a great many hydrocarbon compounds of metals of groups 2B or 3B of the periodic system, particularly:
… There may be mentioned especially aluminium alkyl sesquihalides, thus a mixture of monohalogen aluminium dialkyl and dihalogen aluminium monoalkyl, the halogen preferably being chlorine, but also possibly being bromine or another halogen, or also the individual compounds, and also aluminium trialkyls, such as aluminium triethyl or aluminium tripropyl. It is especially advantageous to use halogen-free alkyls in the polymerisation of propylene. …
[Emphasis supplied.]
¶12Other than the above disclosure Badische does not suggest by way of example or otherwise that alkyl aluminum dihalide in and of itself may be a useful part of its contemplated “Ziegler” catalyst systems. The third component is a compound containing ether, nitrile or hydroxyl groups. While cyclic ethers are disclosed as “suitable” third components, no explicit mention is made of tetrahydrofuran or MTHF. Badische notes that the addition of the disclosed ethers results, “in many cases,” in increased speed of polymerization, increased yields of polymer and higher molecular weights with a reduction in the amount of oily, low molecular weight polymer that is formed.
… Hague discloses all the essential limitations of Claim 1, a typical claim, except for the A1RX2 organometal …. Since Badische suggests that A1RX2 [alkyl aluminum dihalide] and AI2R3X3 [aluminum sesquihalide] are equivalent organometallics in Ziegler-type catalysts, it would be obvious to substitute the A1RX2 of Badische for the AI2R3X3 of Hague. …
¶14The board, observing that “alkyl aluminum dihalide is one of the components (along with monohalogen aluminum dialkyl) of alkyl aluminum sesquihalide,” agreed.
¶15The thrust of appellants’ argument here is that the board erred in failing to consider the prior art as a whole, including several references cited by them in their specification and by the examiner during prosecution. Those references, in appellants’ view, establish beyond peradventure that A12R3X3 and
¶16A1RX2 are not equivalent because they do not behave in the same manner or give the same results in comparable circumstances.
¶17Initially, we would observe that mere inclusion of several compounds in a list of compounds, as Badische does here, does not necessarily establish that each of those compounds is “equivalent” to the others for all purposes, even assuming, as appellants here appear to do, that “equivalency” is a proper criterion for establishing obviousness under 35 U.S.C. § 103. Cf. In re Scott, 323 F.2d 1016, 51 CCPA 747 (1963). Indeed, the references6 relied on by appellants tend to bear out that conclusion and lend force to their arguments here. In view of those references, appellants conclude:
If the whole prior art be considered, one skilled in the art would be led to believe that the improvement in rate of polymerization by the addition of methyl tetrahydrofuran to the Hague et al. titanium trichloride-ethyl aluminum sesquichloride catalyst system is due solely to the activation of the diethyl aluminum, chloride component of the sesquichloride by the methyl tetrahydrofuran, since such activation of a titanium trichloride-diethyl aluminum chloride catalyst by various ethers is shown in Belgian Patent 564,722 … *.7The man skilled *1013in the art would not be led to believe that addition of methyl tetrahydrofuran to the inactive titanium trichloride-ethyl aluminum dichloride system would be of any value whatever, since even if the rate of polymerization of propylene to solid polymers were to be multiplied many fold, it would still be zero. [Emphasis supplied.]
¶18We think that is a fair summary of the situation reflected in the references before us, and that the board did err in not treating those references as part of the “scope and content” of the prior art. See Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545. We must agree with appellants that the totality of the prior art in the record demonstrates that one of ordinary skill in the art would regard alkyl aluminum dihalide to be a less than desirable component of the catalyst system when solid, crystalline polypropylene is the product sought to be produced. In our view, Hague and Badische considered alone or in combination would not fairly suggest to one of ordinary skill that MTHF would transform AIRX2-TÍCI3 into a catalyst valuable for producing crystalline polypropylene when AlRX2-TiCl3 per se was otherwise valueless for that purpose. Appellants’ discovery is, we think, non-obvious and comports with the conditions for patentability set forth in 35 U.S.C. § 103. Compare In re Naylor, 369 F.2d 765, 54 CCPA 902 (1967).
¶19The view we take renders it unnecessary to consider at length the double patenting rejection advanced by the board. That rejection — one of “double patenting of the obvious type” — presents the same basic question as the § 103 rejection, but in narrower aspect. See In re Land, 368 F.2d 866, 54 CCPA 806 (1966); In re Bowers, 359 F.2d 886, 53 CCPA 1590 (1966).
¶20For reasons similar to those advanced above, we find the subject matter of appellants’ claims to be unobvious in view of the subject matter of the Hague claims.
¶21The decision of the board is reversed.
¶22Reversed.