Appeal No. 2006-2378 Page 6
Application No. 10/433,388
discusses the fact that the products “obtained through amidation of the 5-nitro-1,3-
benzenedicarboxylic acid alkyl esters” suffer from “characteristic instability.” Page 4
then discusses the fact that “direct amidation of a dialkyl ester of 5-amino-1,3-
benzenedicarboxylic acid” yields an intermediate product having “no stability problems.”
Changing the order of steps to avoid the use of an unstable intermediate is
central to the invention. Thus, in our view, the order of the steps is a critical limitation.
The examiner’s reliance solely on precedent to meet this critical limitation therefore
contravenes MPEP § 2144.04.
The examiner also has not followed the requirement of MPEP § 2144.04,
emphasized supra, that a court’s rationale for an obviousness holding may be used “if
the facts in a prior legal decision are sufficiently similar to those in an application under
examination.” In the pending rejection, the examiner merely noted that the sequence of
steps had been changed, and then cited Rubin without addressing whether the facts in
the Rubin decision were similar to those of the instant case.
MPEP § 2144.04(IV)(C) summarizes the holding in Rubin as follows:
[A] prior art reference disclosing a process of making a laminated sheet
wherein a base sheet is first coated with a metallic film and thereafter
impregnated with a thermosetting material was held to render prima facie
obvious claims directed to a process of making a laminated sheet by
reversing the order of the prior art process steps.
In our view, combining non-reactive ingredients to create a laminated sheet, as
performed in Rubin, is significantly different from performing a series of chemical
reactions, each of which sequentially modifies a chemical compound, as recited in the
present claims. One of ordinary skill would have expected the same product to result
from the process in Rubin regardless of the order of steps, but that same expectation
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