Appeal 2007-1822
Application 10/482,191
We note the statement of the Examiner that the process “of making a
compound is not a utility under US Patent Practice.” (Answer 5.) While the
Examiner did not reject the claims under 35 U.S.C. § 101, as lacking a
patentable utility, we do agree with Appellants that the utility requirement is
met, as the partial oxidation or ammoxidation products produced by
Appellants’ claimed process (such as acrylic acid, propylene oxide, and
acrylonitrile (Spec. 2)) are “notoriously known,” and known to be very
useful.
The Examiner does not provide any separate basis for the § 112 ¶ 2
rejection of dependent claims 2-12. Thus, we conclude these claims are not
indefinite for the reasons given with respect to claim 1.
OTHER ISSUES
Based on the Examiner’s Answer, we are concerned this case was not
examined as is required by the statutes. (See Answer 4-5 (implying the
scope of Appellants’ claims frustrated classification and performance of the
Office’s “duty in conformance with” the relevant statutes).)
We note the scope of the pending claims in “relatively broad” (Reply
Br. 2), and Appellants have admitted all steps of the process except step D
are in the prior art. (See Appeal Br. 7 (distinguishing Ramachandran, the
single cited reference, based on step D).) Given such a situation, prior to
any further action on the merits, we encourage the Examiner to consider the
relevant prior art to determine whether the prior art alone or in combination
teaches or suggests Appellants’ claimed process, including step D.
With respect to step D, a prior art teaching or suggestion of
continuous processes that have a second loop designed to bypass one or
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