Appeal No. 2001-0936
Application No. 08/952,208
II. The Rejection of Claims 1, 3-6 and 10-16 Under 35 U.S.C.
§ 112, second paragraph
The examiner has stated that claims 1, 3-6 and 10-16 are
incomplete for omitting essential steps, such omission amounting
to a gap between the steps. More specifically, the examiner
states that the omitted step is the required heating of 6-
aminocapronitrile to produce the tetrahydroazepine of formula (I)
consistent with the disclosure. The examiner quotes the
specification, page 4, lines 11-27 as stating that “the sole
source of starting material is heating 6-aminocapronitrile”
(Examiner’s Answer, page 4, line 1).
Initially, we note that the specification, page 4, lines 11-
27 does not appear to contain this alleged quotation. It states
that the reaction mixture “is obtainable” by heating 6-
aminocapronitrile (page 4, line 11) or distilling unconverted 6-
aminocapronitrile (page 4, lines 25-27). We are unable to find
this statement urged by the examiner.
Even were this not to be the case, the claim need not state
the source of the material in the process. The appellants are
claiming the step of reaction, not preparation. While any
reactants for any reaction may need to be “prepared”, it is not
necessary to claim a step of preparation for known reactants.
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