Ex parte WEBER et al. - Page 3




          Appeal No. 94-3251                                                          
          Application 08/071,690                                                      



               Appealed claim 1 is drawn to a process for preparing a                 
          secondary amine comprising a first reaction of an aldehyde and              
          a primary amine to produce a Schiff base and water, and after               
          removing the water, a second reaction of the Schiff base with               
          methylamine and hydrogen in the presence of a hydrogenation                 
          catalyst.  As disclosed in appellants' specification, the claimed           
          process for producing secondary amines results in a reduction of            
          undesired by-products and an increased yield compared to prior              
          art processes for producing secondary amines.                               
               The Terada reference relied on in the examiner's rejection             
          is directed to a two-step process for preparing primary amines.             
          As pointed out by appellants on page 2 of their brief, there is             
          no teaching in the Terada reference of a reaction to form a                 
          secondary amine as in the appellants' process.   Terada's process2                             
          involves a first reaction of an aldehyde and a primary amine to             
          form a Schiff base, and a second reaction in which the Schiff               
          base is hydrogenated in the presence of ammonia and a catalyst.             
          The examiner urges on page 4 of his answer that the Terada                  
          process is analogous to the process of claim 1 and differs in               

               Terada does disclose on page 4 that with the primary amines formed as2                                                                     
          raw materials, "secondary or tertiary amines could be manufactured arbitrarily
          by reacting with organic carbonyl compounds and by hydrogenation."  This is 
          the process disclosed by appellants as the prior art process for preparing  
          secondary amines.                                                           
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