Appeal No. 2006-1273
Application No. 10/420,400
(e.g., yield, purity, etc.) ….” (Final Office Action, page 7). According to the Examiner:
“Generally, differences in concentration or temperature will not support the patentability
of subject matter encompassed by the prior art unless there is evidence indicating such
concentration or temperature is critical. ‘[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.’ In re Aller, 220 F.2d 454, [456,] 105 USPQ 233, 235
(CCPA 1955) (Claimed process which was performed at a temperature between 40° C
and 80° C and an acid concentration between 25 and 70% was held to be prima facie
obvious over a reference process which differed from the claims only in that the reference
process was performed at a temperature of 100° C and an acid concentration of 10%.).”
(Final Office Action, page 7 (emphasis in original).)
The Examiner also recognized that “König et al. differ[] from the instant
invention in that the alcohol is added during the reaction whereas the instant invention
adds the alcohol after the reaction.” (Examiner’s Ans., page 4.)
Nevertheless, the Examiner maintained her § 103(a) rejection: “It would have
been obvious to one of ordinary skill in the art to have added the alcohol before, during or
after the reaction since König et al. teach the reaction can be performed without the
alcohol and therefore it is clear that the addition of the alcohol is not for the reactivity of
the process but to form a biphasic system” to facilitate the separation of the product and
obtain a purer product. (Id. at 4.)
DISCUSSION
For the reasons set forth in the Final Office Action, the Examiner’s Answer and
below, we sustain the rejection of all the claims in this appeal.
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