Appeal No. 2006-2428 Page 13
Application No. 10/362,500
Thus, the one-pot method urged by the examiner is a possible methodology for
Uneme’s process. Similarly, acetonitrile is a possible solvent in the second step of
Uneme’s synthesis. We do not see any disclosure in Uneme which necessarily links the
one-pot method with the use of acetonitrile as the solvent.
Rather, by combining Uneme’s embodiment using a one-pot synthesis with the
embodiment using acetonitrile in the second synthesis step, the examiner posits a
scenario based on a set of disparately disclosed possibilities, rather than any explicit or
inherent disclosure in the reference. As noted supra, inherent anticipation may not be
based on probability or possibility. Oelrich, 666 F.2d at 581, 212 USPQ at 326. As also
discussed supra, to anticipate a claim, a reference must necessarily describe all of the
claimed limitations “as set forth in the claim . . . .” Verdegaal Bros., 814 F.2d at 631, 2
USPQ2d at 1053. In our view, Uneme simply does not disclose the use of acetonitrile in
the chlorination step. We therefore reverse the examiner’s anticipation rejection of
claim 2.
Claim 4 requires the SO2 in the process to be “used in an amount of from 1
mol % to 50 mol %, based on the starting material of formula (II).” We agree with
Appellants that Uneme does not anticipate claim 4.
Despite including claim 4 in the rejection under § 102(b) over Uneme, the
examiner does not appear to state why Uneme anticipates claim 4. The Final Rejection
does not address claim 4 directly. In the Examiner’s Answer, the sole references to
claim 4’s concentration limitation appear in the context of obviousness, stating that
modification of the amount of SO2 would have been routine, and “a mere optimization of
a variable.” Answer, pages 5 and 6. By arguing that one of ordinary skill would have
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