Appeal No. 2001-0421
Application 08/926,835
DISCUSSION
The present invention is directed to a process for the
hydrogenation of an imine with hydrogen in the presence of an
iridium catalyst. Claims 1 and 36. Appellants’ principal
argument is that none of the cited references, alone or in
combination, disclose or suggest “an iridium catalyzed
hydrogenation reaction that additionally contains an acid as
required by the present claims.” See Appeal Brief, Paper No. 14,
received September 29, 1998, page 3, paragraph (8)(a). In this
regard, appellants further explain that “additional use of an
acid in the context of the instant invention means an aqueous
acidic solution.” Reply Brief, Paper No. 16, received January
15, 1999, page 1, paragraph (1).
The examiner has taken the position that the prior art
teaches an in situ acid. In particular, the examiner maintains
that the “sulfonic group in column 1, lines 55-60 [of Osborn],
reads on the claimed acid.” Examiner’s Answer, page 4, paragraph
(11). The examiner further notes that the Petit reference
discloses a starting compound that is itself an acid. Id., page
5, paragraph (11).
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