Appeal No. 2006-0767
Application No. 09/962,258
Example 6 on page 10 of the specification is operated at 50°C. while appellants
compare this example to Example 17 operated at 65°C. (see page 12 of the
specification). We note that Example 7 (page 10) is operated at “reflux” temperature
and provides better yields of product than either Example 6 or Example 17 (96% vs.
83% and 90%, respectively). We further note that no reaction temperature is recited in
the claims on appeal.1 Therefore the results alleged to be unexpected by appellants
are not commensurate in scope with the claimed subject matter, there are a welter of
unfixed variables which do not establish the criticality of any one variable, and the
results have not been shown to be truly unexpected.
Additionally, we note that Example 17 cannot be representative of the subject
1In the event of further or continuing prosecution, the examiner and appellants should
review the disclosure on page 6 of the specification that it is an “essential feature” of the present
invention that the Grignard reagent is added at a high reaction temperature and not at the low
temperature taught in the prior art, noting that the claims on appeal fail to recite any reaction
temperature.
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