Appeal No. 2001-0849 Page 8
Application No. 08/990,120
suggested to one of ordinary skill to conduct the claimed invention at a pH within the
claimed ranges. Examiner never provides an explanation and it is not satisfied by
making statements that the claimed pH limitation is “not in and of itself patentable”
or inherently covered by the term “dilute acid.” Until such an explanation is given, we
are not in a position to review the appropriateness of the rejection.
Accordingly, examiner needs to clarify the grounds for establishing a prima
facie case of obviousness for combining the prior art disclosures.
Finally, another difficulty arises as a result of the examiner never fully
addressing the experimental data set forth in appellants’ Declaration of November
16, 1999 (paper no. 12). According to appellants’ Brief (bottom p. 4), the
“Declaration previously filed by Appellants on November 12, 1999, demonstrates
the criticality of pH on the net yield of the TDA sulfoxide.” Appellants go on to
discuss the results set forth on the Declaration. We do not know examiner’s
position regarding the data. This is all that we could find on the subject (Examiner’s
Answer, p. 5):
Applicant’s amendment filed 3/1/99 and the arguments together with a
declaration filed 11/2/99 have been fully considered but they are not persuasive.
Applicants amended claims 1, 5-6, 10 and 14-15, wherein the pH of the claimed
oxidation process is limited to ‘about 0.5 to about 5.0’. In the argument filed
11/2/99 applicants refer to the accompanying declaration for support that the pH
range of about 0.5 to 5.0 is very critical to the instantly claimed process (as the
pH increases from 5.5 to 0.5, percent yield decreases). … Applicants also
contend that [Shanklin] do not suggest the criticality of controlling the pH of the
reaction. This is not persuasive because the 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.
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