Appeal No. 94-2062
Application 07/870,841
a whole must be considered. See Ochiai, 71 F.3d at 1569, 37
USPQ2d at 1131; In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d
1663, 1666 (Fed. Cir. 1996). The subject matter as a whole of
process claims includes the starting materials and product
made. When the starting and/or product materials of the prior
art differ from those of the claimed invention, the examiner
has the burden of explaining why the prior art would have
motivated one of ordinary skill in the art to modify the
materials of the prior art process so as to arrive at the
claimed invention. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at
1131. The examiner asserts that “[i]t is clear from the
disclosure in Alhede that amines generally may be reacted with
the sulfonic acid derivatives to form guanidines”, but does
not explain why the disclosure of the use of primary
monoamines would have suggested, to one of ordinary skill in
the art, the use of compounds having two primary amine groups,
particularly compounds which have the structure recited in
appellants’ claim 19 and which undergo a selective reaction as
recited in that claim.
The examiner further argues (answer, page 7):
-5-5
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