Appeal 2007-0315
Application 10/374,300
free [(1)], mono-salt (half-neutralized) [(2)] and di-salt (fully neutralized)
[(3)], could not exist together” (Br. 11). However, the Examiner carefully
shows, relying on LeChatelier’s principle, that all three species could co-
exist, and then explains how the concentrations of the starting species would
affect the final ratio (Answer 11-12). Appellants do not identify any defect
in the Examiner’s reasoning nor do they explain or provide evidence as to
why “[t]he pKa of malonic acid would not permit the presence of all three
species,” as they contend would be the case (Br. 11).
3) Malonic acid is mentioned only once in Jokura
Appellants contend that malonic acid is mentioned only once in
Jokura, and there is no examples of using it or its amine salt (Br. 12-13).
We do not find this argument persuasive. Malonic acid is listed
among eight dicarboxylic acids (Jokura, at col. 3, ll. 31-36); of the five
examples of dicarboxylic salts disclosed by Jokura, three of these (Jokura, at
col. 3, ll. 41-45) meet the limitations of an “ammonia” or “hydrocarbyl
amine” salt as recited in claim 1. Because the genus of dicarboxylic salts
described by Jokura is so limited, we find that the choice of the claimed
malonic acid in combination with a protonated amine or hydrocarbyl amine
would have been obvious to persons of skill in the art. See In re Petering,
301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962) where the description
of a small genus of compounds in a prior art reference was held to be a
disclosure of each species within the genus.
Furthermore, we agree with the Examiner that “although Jokura does
not exemplify the amine salt, this does not constitute a teaching away from
the amine salt form. The fact that the examples do not exemplify all the
embodiments is not a teaching away from the embodiments as set forth in In
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