Appeal 1997-1635
Application 08/319,667
It must be kept in mind that the essential feature
of *** [the] claimed process is the joint presence
of a primary amine *** and an organic sulfonic acid
in the crude (meth)acrylic acid under distillation.
The Federal Circuit said it best when it gave the
following sage advice: "The invention disclosed in *** [the]
written description may be outstanding in its field, but the
name of the game is the claim." In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998), citing
Rich, Extent of Protection and Interpretation of Claims--9
American Perspectives, 21 Int' Rev. Indus. Prop. & Copyright
L, 497, 499 (1990)("The U.S. is strictly an examination
country and the main purpose of the examination, to which
every application is subjected, is to try to make sure that
what each claim defines is patentable. To coin a phrase, the
name of the game is the claims."
There is nothing in claim 1 which requires the "joint"
presence of the sulfonic acid group-containing compound and
the amine. The claim requires the sulfonic acid group-
containing compound to be added to the impure methacrylic acid
The late Giles Sutherland Rich, Circuit Judge, U.S. Court of Appeals for the9
Federal Circuit.
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