Appeal No. 2001-0936
Application No. 08/952,208
aminocapronitrile and 0.01% of a tetrahydroazepine with water in
the liquid phase in the presence of a heterogeneous catalyst.
The invention also relates to a process for the preparation of
caprolactam which involves reacting a tetrahydroazepine with
water in the liquid phase in the presence of a heterogeneous
catalyst. (Claims 1 and 13).
DISPOSITION
I. The Rejection of Claims 1, 3-6 and 10-16 Under 35 U.S.C.
§ 112,first paragraph
The examiner has stated that the disclosure is not enabling.
More specifically, the examiner has stated that the starting
material which is critical or essential to the practice of the
invention, but is not included in the claims, is not enabled by
the disclosure. The examiner states that no sources of the
tetrahydroazepine of formula I (THA-I) have been provided. The
examples, it is said, show production of THA-I by heating
aminocapronitrile, but as the claims include sources by any other
means, enablement is lacking. (Examiner’s Answer, page 3, lines
4-15).
The enablement requirement of 35 U.S.C. §112, first
paragraph, requires that the patent specification enable “those
skilled in the art to make and use the full scope of the claimed
invention without ‘undue experimentation’” Genentech, Inc. v.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007