Appeal No. 2001-0849 Page 3
Application No. 08/990,120
de novo examination tribunal (35 U.S.C. § 6(b)), it is necessary that we understand
examiner’s position and that that position be thoroughly presented before we make
that review. Accordingly, we vacate the rejection and remand the application to the
examiner so that the rejection can be reconsidered in light of our discussion and, if
reinstituted, supported with proper grounds.
The claimed invention is directed to a process for making a sulfoxide
comprising
€ oxidizing a sulfide in a reaction mixture containing a perborate as an oxidizing
agent;
€ wherein the oxidation occurs at a pH of from about 0.5 to about 5.0.
It is axiomatic that:
Under § 103, the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the subject matter is
determined.
Graham v. John Deere, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Regarding the scope and content of the prior art, examiner (Examiner’s
Answer, pp. 4-5) states that Durst teaches “the preparation of sulfoxides by
oxidation of sulfides”; Shanklin teaches “the process of making a sulfoxide of a
compound having the general formula I comprising the oxidation of the
corresponding sulfide with perborate”; and, Hackh’s teaches “percarbonate … as
oxidizing agent.”
Regarding the differences between the prior art and the claims at issue,
examiner (Examiner’s Answer, p. 5, first paragraph) addresses various limitations
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