Appeal No. 2006-2428 Page 9
Application No. 10/362,500
known processes directed to the same purpose are not patentable because such results
are inherent.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376,
58 USPQ2d 1508, 1514 (Fed. Cir. 2001).
In arguing the merits of the anticipation rejection, Appellants direct our attention
to columns 3 and 4 of Uneme, which describe the chlorination step. Appeal Brief, page
5. As argued by the examiner (Answer, page 5), Uneme discloses that sulfuryl chloride
may be used as the chlorinating agent when converting compound (II) to compound (III)
(termed compound (I) by Uneme). Uneme, column 3, lines 13-15 and 43-60.
Moreover, Uneme provides a number of working examples which use sulfuryl chloride
as the chlorinating agent. See, e.g., Examples 2 and 4, at column 12.
Under the described reaction conditions, sulfuryl chloride dissociates to yield
chlorine gas (Cl2). Uneme, column 3, lines 13-15. SO2 is also produced when sulfuryl
chloride dissociates under reaction conditions. See Appellants’ specification, page 8
(“SO2 may either be added as such in gaseous form, or a compound capable of
releasing SO2 may be added. SO2Cl2 is especially suitable for that purpose.”).
Appellants’ subsequent arguments responding to the obviousness rejection
essentially concede this point. Brief, page 8 (“[T]he very basic laws of chemistry dictate
that SO2 and Cl2 will dissociate into their stoichiometric amounts in order to achieve a
balanced equation.”). Thus, because sulfuryl chloride necessarily dissociates to
produce Cl2 and SO2, SO2 was inherently present in the reaction medium when Uneme
used sulfuryl chloride as the chlorinating agent.
Moreover, in our view, Uneme’s disclosure of using sulfuryl chloride as the
chlorinating agent inherently discloses that the SO2 was present in the reaction medium
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