Appeal No. 1997-1790
Application 08/171,550
that only the diamines used to prepare Aldimines #1 (HMDA), #2 (triethylene glycol diamine) and #3
(isophorone) “satisfy the description requirement” of § 102(e) as “[a]ll of the other amines, including
HMDA, are merely
named,” thus constituting an insufficient description for purposes of this section of the statute “based on
the holding in Wiggins” (principal brief, page 7). Appellants further submit that claim 15 involves the
selection of the starting materials, that is, a diamine and an aldehyde, and there is “nothing to direct the
skilled artisan to the necessary species” (principal brief, pages 7-8).
We have carefully reviewed the record before us in light of appellants’ arguments and find that
we agree with the examiner that Mormile would have reasonably described the aldimine prepared from
isobutyraldehyde and HMDA to one of ordinary skill in this art within the meaning of § 102(e). Not
only is isobutyraldehyde the only aldehyde or ketone starting material used to prepare aldimines in the
Mormile Examples but it is reacted with the dimethyl homolog of HMDA to prepare Aldimine #1,
which dialkyl homolog along with three other dialkyl homologs and HMDA is included in a listing of
preferred cycloaliphatic diamines. Thus, we conclude that the facts in the record before us are more
akin to Sivaramakrishnan wherein the court distinguished Wiggins, and find that, as in
Sivaramakrishnan, one of ordinary skill in this art would not have difficulty following the teachings of
Mormile and thus would arrive at the aldimine prepared from isobutyraldehyde and HMDA without
having to “choose judiciously from a genus of possible combinations of . . . [starting materials] to obtain
the very subject matter to which appellant’s . . . claims are directed.” 673 F.2d at 1384-85, 213
USPQ at 442.
Accordingly, based on our consideration of the totality of the record before us, we have weighed
the evidence of anticipation found in Mormile with appellants’ countervailing evidence of and argument for
no anticipation in fact and find that the claimed invention encompassed by appealed claims 13 through 15
are anticipated as a matter of fact under 35 U.S.C. § 102(e).
The examiner’s decision is affirmed.
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