Appeal No: 1997-1820
Application No: 08/313,941
Discussion
The 35 USC § 112, first paragraph, rejection
The examiner rejects claims 18, 19, 21, 22, and 23 under
35 USC § 112, first paragraph. According to the examiner the
claims limiting the metal of the catalyst to either nickel
(claim 21), rhenium (claims 18, 22, and 23) or ruthenium
(claim 19) are not supported by the specification because the
only species of metal disclosed is palladium (Paper 32 (Ex.
Ans) at 7).
The '941 disclosure describes the catalyst of the
invention as containing "at least one metal selected from the
group consisting of rhenium, cobalt, nickel, ruthenium,
rhodium, palladium, osmium, iridium, and platinum" (Paper 1 at
3: 19-22). The examples of catalysts presented in the '941
disclosure all appear to be directed to catalysts that contain
palladium (Paper 1 at 10-12).
The examiner argues that "a generic disclosure does not
support a species from within the genus" especially "in the
highly unpredictable area of catalysts." The examiner has
provided no objective evidence that a metal other than
palladium would not be expected to work as a catalyst in the
claimed process. The examiner has pointed to no objective
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