Appeal No. 2006-2428 Page 17
Application No. 10/362,500
process of Uneme would not have arrived at the SO2 amounts of from 1-50 mol %, as
recited in claim 4. Moreover, we see nothing in Uneme suggesting the use of less than
100 mol % of SO2 based on the starting material of formula (II), in the chlorinating step.
We therefore cannot agree with the examiner that the amount of SO2 recited in claim 4
would have been obvious over Uneme’s disclosure. We reverse the obviousness
rejection of claim 4.
The examiner also rejected claim 2 as obvious in view of Uneme. We vacate this
rejection in favor of the new ground of rejection set forth below.
To summarize, because Uneme inherently describes the presence of SO2 in a
catalytic amount in the chlorinating step of converting compound (II) to compound (III),
we affirm the examiner’s obviousness rejection of claim 1. Claims 3, 5, and 6 fall with
claim 1. However, because Uneme does not suggest the use of SO2 in the chlorinating
step in an amount of from 1-50 mol %, based on the starting material of formula (II), we
reverse the obviousness rejection of claim 4. We vacate the rejection of claim 2.
New Ground of Rejection
Under the provisions of 37 CFR § 41.50(b), we enter the following new ground of
rejection: Claim 2 is rejected under 35 U.S.C. § 103(a) as obvious in view of Uneme
and Rühter.4
Claim 2 is directed to the same process as claim 1, and adds the limitation that
“step a) is carried out in acetonitrile.” Uneme discloses that the chlorinating step (step
a) in the instant claims) should be carried out in “a solvent that is inert under reaction
conditions . . . ,” the preferred solvents being “halogenated hydrocarbons such as
4 Rühter et al., U.S. Patent 5,571,813, issued Nov. 5, 1996.
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