Appeal No. 2001-0849 Page 7
Application No. 08/990,120
differences in claimed and disclosed temperature ranges are “insignificant”. Until
an explanation is given that properly addresses the claimed temperature range, we
are not in a position to review the appropriateness of the rejection.
Regarding the pH limitation, examiner makes two statements. (1) “A pH of
about 0.5 to 5.0 or 0.5 to 1.0 is not in and of itself patentable over the prior arts.” (2)
“[T]he process of [Shanklin] (column 6, reaction Iva-2) was performed in dilute acid
solution and as such, the pH of the reaction solution must be within the range of 0.5
to 5.0.”
It is not clear to us what examiner is trying to say. If examiner’s position is
that it would have been obvious over the prior art to conduct the method at the
claimed pH because Shanklin discloses conducting a relevant process using a
“dilute acid,” then examiner should so state, preceded by a thorough analysis of
Shanklin’s disclosure and comparison with the claims. Reaction Iva-2, to which
examiner refers, involves oxidizing a unique sulfide with sodium perborate in “dilute
acid” to obtain a corresponding sulfoxide. The pH, the precise acid used and the
level of dilution are unknown. Therefore, contrary to what examiner suggests,
Shanklin’s “dilute acid” does not inherently have a pH between 0.5 to 5.0; the term
“dilute acid” suggests a broader range of possible pHs than what is claimed,
covering pHs from just above 0.0 to just below 7.0. The issue is whether it would
have been obvious to conduct the claimed invention at a pH within the more limited
claimed ranges of 0.5 to 5.0 and 0.5 to 1.0, in view of Shanklin. Accordingly,
examiner must explain how Shanklin’s disclosure of using a “dilute acid” would have
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