Appeal No. 2006-2428 Page 12
Application No. 10/362,500
212, 214, 40 USPQ 665, 667 (CCPA 1939) (emphasis and bracketed material in
original)). Moreover, anticipation is not established by selecting isolated elements from
unrelated portions of a reference and combining them to arrive at the claimed invention.
See In re Arkley, 455 F.2d 586, 587-588, 172 USPQ 524, 526 (CCPA 1972).
In our view, Uneme does not explicitly or inherently disclose performing the
chlorination step in the presence of acetonitrile, as recited in claim 2. Rather, by
attempting to construct a single anticipating embodiment from portions of the reference
which are not necessarily related, the rejection engages in the type of analysis
prohibited by Arkley.
As urged by Appellants (Appeal Brief, page 5), Uneme discloses that the
chlorinating step may be performed without a solvent, or in “a solvent that is inert under
reaction conditions,” preferably “halogenated hydrocarbons such as dichloromethane,
chloroform, carbon tetrachloride, 1,2-dichloroethane, 1,1,1-trichloroethane and 1,1,2,2-
tetrachloroethane.” Column 3, lines 55-60. As urged by the examiner (Answer, page 3),
Uneme discloses that, after the chlorinating step, the aminating step may be performed
without isolation of the intermediate compound, using acetonitrile as the solvent. Column
6, lines 19-34.
However, we see nothing in the reference that necessarily, or inherently,
discloses the use of acetonitrile as the solvent in the initial chlorinating step, as required
by claim 2. Uneme states that the intermediate compound resulting from the chlorinating
step “may be isolated and purified, or in some cases, it can be reacted with an aminating
agent without isolation and purification.” Column 6, lines 19-21 (emphases added).
Acetonitrile is one of many suitable solvents for the aminating step. Id. at lines 27-47.
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