Appeal No. 2006-0767
Application No. 09/962,258
matter on appeal since all of the aryl halide is added with the Grignard reagent and
none of the aryl halide is charged initially, while claim 1 on appeal requires “part” of the
aryl halide to be charged initially (see our claim construction above). See the
specification, page 12, where all of the 3-chlorotoluene is added in the first hour
“dropwise in parallel” with the phenylmagnesium chloride, which is added over two
hours. Furthermore, appellants have not submitted any evidence commensurate in
scope with the claims as construed above, namely showing unexpected results for
adding “virtually 100%” of the aryl halide initially. See In re Boesch, supra.
Appellants argue that the examiner has not provided adequate reasons for
substantiating the rejection of dependent claims 2-3 and 19-22 (Brief, page 5).
Appellants also address the patentability of each claim (Brief, pages 6-9). However,
appellants merely recite the limitations of each claim followed by the same generic
arguments as argued against claim 1 on appeal (e.g., see the paragraph bridging pages
6-7). Accordingly, we find no specific arguments for the separate patentability of any
dependent claim and adopt our comments from above regarding appellants’ previous
arguments.
For the foregoing reasons and those stated in the Answer, we determine that the
examiner has established a prima facie case of obviousness in view of the reference
evidence. Based on the totality of the record, including due consideration of appellants’
arguments and evidence, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section 103(a). Therefore
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