Appeal No. 2006-2428 Page 16
Application No. 10/362,500
the presence of a catalytic amount of SO2.” Claim 1 does not contain any limitation
which excludes the presence of SO2 in excess of the catalytic amount. Thus, despite
the fact that Uneme’s process uses more than a catalytic amount of SO2, the amount of
SO2 used by Uneme inherently contains within it a catalytic amount.
As discussed supra, in our view, Uneme anticipates claim 1. Therefore, Uneme
also renders claim 1 obvious. Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548,
220 USPQ 193, 198 (Fed. Cir. 1983) (“[A]nticipation is the epitome of obviousness.”).
Because claim 1 does not contain any positive recitation excluding SO2 amounts in
excess of the catalytic amount, Appellants’ response to the obviousness rejection does
not persuade us that either of these rejections is incorrect. We therefore affirm the
obviousness rejection of claim 1. Claims 3, 5 and 6 fall with claim 1.
In contrast to claim 1, claim 4 contains a positive recitation limiting the amount of
SO2 used in the step of converting compound (II) to compound (III). As discussed
supra, claim 4 limits the amount of SO2 to an amount of from 1-50 mol %, based on the
starting material of formula (II).
Uneme discloses that the chlorinating agent should be used in an amount of
1-1.5 equivalents based on the amount of compound (II), and that “an excess amount
(2-10 equivalents) may also be used as required.” Column 3, lines 61-64. Thus, when
using sulfuryl chloride as the chlorinating agent in Uneme’s process, the smallest
amount of SO2 dissociating therefrom will be at least 100 mol %, using the terminology
of claim 4.
In our view, given that the smallest amount of SO2 suggested by Uneme is 100
mol % based on the starting material of formula (II), one of ordinary skill optimizing the
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007