Appeal No. 96-2322 5
Application No. 08/112,478
required by the claimed subject matter. Furthermore, there is no disclosure in Yamazaki
of “directly drying the reaction product.” The reference, in contrast, specifically
discloses a process step of filtering the oxamide to obtain the final product. See
Operational Examples 1 through 9, pages 7 and 8. Although the examiner states that,
“[g]etting product by wet solid or by filtering is certainly a physical phenomena which
one of ordinary skill in the art can optimize by routine experimentation,” Answer, page
6, in our view that conclusion depends upon the evidence present on the record before
us with respect to that limitation. The only suggestion for direct drying and the
consequent omission of the filtration step comes solely from appellants’ specification.
Accordingly, we conclude that there is no basis for the examiner’s conclusion that
obtaining a wet solid or filtering the product are equivalent procedural steps.
Since Yamazaki fails to disclose a limited amount of alcohol, the examiner relies
upon Nemec to disclose an analogous process which is both continuous and is performed
in the absence of alcohol. Nemec’s process however, specifically excludes oxalic acid
ester from the diesters disclosed therein. We find that Nemec requires that the number
of carbon groups between two carboxylic acid amide groups must be at least two. See
column 1, lines 13-28. In addition, as Nemec uses an ethylene glycol diester of an
aliphatic dicarboxylic acid, the by-product obtained from the formation of amide is
ethylene glycol as opposed to the aliphatic alcohol of the claimed subject matter. We
further find that filtering and/or other purification steps of the product is uniformly
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