Appeal No. 2001-0849 Page 6
Application No. 08/990,120
perborate oxidizing agent. Where is this disclosed in the cited prior art? In another
instance, claim 19 calls for using, as the sulfide staring material, 2-(methylthio)-5-
(trifluoromethyl)-1,3,4-thiadiazole. Where is this disclosed? Examiner must
analyze each claim separately and address each and every limitation in the claims
in making the determination of obviousness of the claimed invention as a whole.
Until examiner does so, we are not placed in a position to make an amenable
review.
Second, where differences between the claims and the prior art have been
addressed, namely as to temperature and pH, an insufficient rationale is given to
support the obviousness for modifying the prior art method in order to derive the
claimed invention.
Regarding the temperature range of 60 to 900C, examiner states that “[t]he
temperature range of –70 to 800C by [Durst] embrace a temperature range of 60 to
900C because, there is no significant difference between the upper limits of 800C
and 900C.” We do not understand this reasoning. Notwithstanding that examiner
never explains why the difference is insignificant, ten degrees would appear to be a
significant overlap in ranges. The issue is whether it would have been obvious to
conduct the claimed invention at the claimed temperatures in view of the prior art.
Accordingly, examiner must explain how Durst’s disclosure of using a temperature
within the range of –70 to 800C would have suggested to one of ordinary skill to
conduct the claimed invention at a temperature within the claimed range. Examiner
does not provide an explanation and it is not satisfied by simply concluding that
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