Appeal No. 2006-2428 Page 8
Application No. 10/362,500
chlorine in the absence of SO2. Id. at page 4. Appellants further urge that the examiner
has not asserted the inherency of the presence of a catalytic amount of SO2, but has
instead conceded in the first office action that Uneme’s chlorination reaction does not
proceed in the presence of SO2. Id.
Thus, argue Appellants, “[b]ased on the foregoing arguments, and the
Examiner’s own concession, Appellants assert that the Uneme et al. synthesis does not
teach that the chlorination reaction step occurs in the presence of SO2, nor does it teach
that the chlorination reaction step occurs in the presence of a catalytic amount of SO2.”
Id. (emphasis in original).
The examiner responds to Appellants’ arguments by pointing out that Uneme
discloses the use of sulfuryl chloride as the chlorinating agent. Answer, page 5. The
examiner urges that because sulfuryl chloride dissociates to SO2 and Cl2, SO2 is
present in the process described by Uneme. Id. The examiner further urges that the
increased yield described in Appellants’ specification as resulting from the use of
SO2Cl2 instead of chlorine alone is evidence that the SO2 “must inherently have acted
as a catalyst.” Id.
We agree with the examiner that Uneme anticipates claim 1. As noted by
Appellants (Brief, page 3), “[a] claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051,
1053 (Fed. Cir. 1987). However, discovery of a property inherent to a prior art process
does not render that process patentable, even if the prior art did not appreciate the
property. Id., 814 F.2d at 633, 2 USPQ2d at 1054. Thus, “[n]ewly discovered results of
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