Appeal No. 1996-3017
Application No. 08/851,810
Appellant maintains that "the sublimation operation in
Evans is far, far removed from the reaction step," i.e., "[a]
plurality of processing steps intervene" (page 20 of principal
brief). Furthermore, appellant submits that "[i]n contrast to
Evans, claims 6-10, 13, 19 and 20 recite a one-step,
simultaneous reaction and isolation" (page 20 of principal
brief). However, like the examiner, we do not find that this
argument is germane to the presently claimed subject matter.
As noted by the examiner, none of claims 6-10, 13, 19 and 20
recite the asserted one-step, simultaneous reaction and
isolation. Independent claim 6 simply specifies a process
"comprising heating, refluxing and subliming an aqueous medium
. . ." (emphasis added). It is elementary that by virtue of
the claim language "comprising," the claim is "open" to
additional steps, including any intervening steps disclosed by
Evans. Moreover, we find no error in the examiner's reasoning
that even if the appealed claims recited a simultaneous
operation, performing the reaction transformation in one step
rather than sequential steps would have been obvious to one of
ordinary skill in the art, i.e., it would have been obvious
for one of ordinary skill in the art to eliminate intervening
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