Appeal No. 2000-0639 Page 4
Application No. 08/537,560
terms “contacting” or “under suitable reaction conditions” in claim 5, nonetheless, the
examiner has not adequately explained why those terms render claims 5 through 17
and 20 indefinite.
The rejection of claims 5 through 17 and 20 under 35 U.S.C. § 112, second
paragraph, is reversed.
CLAIMS 1 THROUGH 4
Claims 1 through 4, however, stand on different footing.
Independent claim 1 recites a two-step process for preparing “1-aryl-2-(1-
imidazolyl) alkyl ethers and thioethers” (emphasis added). In step (b), appellants recite
“coupling the product of step (a) with an imidazolyl ethanol derivative under suitable
reaction conditions” (emphasis added). On reflection, it can be seen that this claim is
internally inconsistent. If applicants begin with “an imidazolyl ethanol derivative,” it is
unclear how they would or could prepare a thioether recited in claim 1. As stated by the
examiner, “how is a thioether going to be obtained if an imidazolyl ethanol derivative is
always the starting material?” (Examiner’s Answer, page 6, lines 2 through 4).
Furthermore, in claim 1, step (a), appellants begin with “an aromatic or
heterocyclic derivative.” But the claimed process is drawn to preparing “1-aryl-2-(1-
imidazolyl) alkyl ethers and thioethers” (emphasis added). Again, the claim is internally
inconsistent. If applicants begin with “an aromatic or heterocyclic derivative,” it is
unclear why they prepare “1-aryl-2-(1-imidazolyl) alkyl ethers and thioethers,” but not “1-
heterocyclyl-2-(1-imidazolyl) alkyl ethers and thioethers.” As pointed out by the
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