Appeal No. 2001-0421
Application 08/926,835
At the outset, we note that our consideration of this appeal
has been hampered by the prosecution history. The first Office
action in this case was a final rejection. See Paper No. 10,
mailed December 22, 1997. Therein, the examiner did not make any
explicit findings in regard to that aspect of the claimed subject
matter requiring “additionally contains an acid.” In responding
to the final rejection, appellants argued that Osborn is “totally
silent on the use of an acid in the process described therein.”
Request for Reconsideration, Paper No. 12, received May 26, 1998.
The examiner argued in the Advisory Action (Paper No. 13,
mailed June 3, 1998) that “Osborn et al, column 1, line 55-57,
Burk et al, example, and Chao et al, page 338, expressly teach
acid in the hydrogenation reaction.” Appellants disputed the
allegation in regard to Osborn arguing, “the disclosure of -SO3H
as a substituent of the disphosphine ligand of the iridium
catalyst does not constitute a disclosure of an iridium catalyzed
hydrogenation reaction that ‘additionally contains an acid.’”
Appeal Brief, page 3.
Surprisingly, in stating the rejection in the Answer, the
examiner still did not make any explicit findings in regard to
this aspect of the claimed subject matter. Rather, the only
mention of this claim requirement is the examiner’s comment on
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