Appeal No. 2001-0421
Application 08/926,835
page 4 of the Answer that “[a]s to the specific acid, sulfonic
group in column 1, lines 55-60, reads on the claimed acid.”
As the record stands, neither the examiner nor appellants
have adequately explained their positions as to the metes and
bounds of the claim requirement that the reaction “additionally
contain an acid.” In our view, the examiner and appellants would
be hard-pressed to provide such explanation due to the manner in
which claim 1 is drafted. As written, claim 1 does not provide
for active, positive method steps. Instead, claim 1 describes a
“reaction mixture” which is presumably to be used “for the
hydrogenation of an imine.”1 It may be that the examiner and
appellants have redrafted the claim in their minds to provide the
needed active steps, e.g., “providing a reactive mixture
containing X and Y,” “reacting X with Y” etc. in formulating
their respective positions. But without the examiner and
appellants setting forth on the record a fact-based explanation
in support of their claim construction, we have, in effect,
nothing to review.2
1 Note that there is no antecedent support for the phrase
“the reaction mixture” in claim 1.
2 This Board serves as a Board of review, not a de novo
examination tribunal. 35 U.S.C. § 6(b) (“the [Board] shall, on
written appeal of an applicant, review adverse decisions of
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