Appeal No. 2005-0977 Page 3
Application No. 09/840,488
claims 1-9 as anticipated by Pfrengle is affirmed.
OTHER ISSUE
Our affirmance of the rejection under 35 U.S.C. § 102(e) constitutes a disposition
of all the claims on appeal, therefore we need not reach the rejection of claim 9 under
the first paragraph of 35 U.S.C. § 112. However, in the event of further prosecution in
this application, we would encourage appellants and the examiner to resolve what
appears to be a simple factual issue - either Zn+1 can be used in the claimed method, or
as the examiner asserts (Answer, page 4), it cannot. Appellants have argued, on the
one hand, that “the valence state of the metal has no impact on the transmetallation
reaction” (Brief, page 6), and on the other hand, that “a reasonable person of ordinary
skill . . . would not attempt to produce a compound (III) wherein M represents Zn in the
valence state +1” (id., page 5). These seemingly contradictory arguments do nothing to
dispose of the issue.
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