Appeal No. 2006-2428 Page 15
Application No. 10/362,500
reaction conditions to SO2 and Cl2,3 Uneme’s chlorination reaction “has SO2 and
inherently, would have acted as a catalyst in the reaction process.” Id. at page 5. The
examiner further asserts that “[c]laiming variable amounts of SO2 is a modification within
a routine effort of an artisan and does not rise to the level of invention. It is a mere
optimization of a variable.” Id. (citation omitted).
Appellants argue that the SO2 in Uneme’s process is not present in a “catalytic
amount” as required by claim 1. Appeal Brief, pages 7-9. Appellants urge that the
claim term “catalytic amount” has been defined in the specification as being a “less-
than-stoichiometric amount based on the starting material of formula (II).” Id. at page 8.
Thus, urge Appellants, when Uneme uses stoichiometric amounts of sulfuryl chloride as
the chlorinating agent, the SO2 which dissociates from the sulfuryl chloride will
necessarily be present in a stoichiometric amount, which is more than the claimed
“catalytic amount,” as defined in the specification. Id. Because the SO2 in Uneme’s
process is present in a stoichiometric amount, argue Appellants, “the amount of SO2
formed, via dissociation, will not, and can not, be a ‘catalytic amount’ as required by the
claims.” Id. at pages 8-9.
We do not agree with Appellants that the specification’s definition of the term
“catalytic amount” excludes from claim 1 quantities of SO2 in excess of a catalytic
amount. Claim 1 requires only that the chlorinating step be “performed using chlorine in
3 The examiner relies on two apparently equivalent documents, U.S. Patent 4,748,243 and EP 2 260 560,
both to Beck et al., to establish the inherent dissociation of sulfuryl chloride to SO2 and Cl2. Answer, page
5. The Answer does not list either of these documents as being relied upon in any rejection. See id. at
page 3. However, Appellants have essentially conceded 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, neither of the Beck documents is required to establish the inherent
dissociation of sulfuryl chloride to SO2 and Cl2. See also Uneme, at column 3, lines 13-15, disclosing that
sulfuryl chloride releases Cl2 under reaction conditions; and Appellants’ specification, at page 8,
disclosing that sulfuryl chloride also releases SO2 under reaction conditions.
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