Ex Parte ANTON et al - Page 9


                    Appeal No. 95-1256                                                                                                  
                    Application No. 08/043,917                                                                                          




                    1995) arises since this application and Ohura appear to be claiming the same patentable                             
                    subject matter.  We make the following observations:                                                                
                            With respect to this application, when for example                                                          
                                   R’=RfCF2X                                                                                            
                                   Rf=CF2 (see spec., p. 3, lines 30-32)                                                                
                                   X=F                                                                                                  
                                   R=RfCF2Y                                                                                             
                                   Y=F                                                                                                  
                                   Z=F                                                                                                  
                               the reaction of claim 1 of this application [i.e., R’CFZI + H2 = RCFZH] reads                            
                               on the following reaction: C3F7I + H2 = C3F7H, at 4000C or less in the absence                           
                               of a catalyst.                                                                                           
                            With respect to Oharu3, the representative claims read:                                                     
                                   A method for producing a hydrofluorocarbon of the formula HnRfH                                      
                                   wherein n is 0 or 1, and when n is 0, Rf is a C2-12 linear or branched                               
                                   polyfluoroalkyl group, and when n is 1, Rf is a C2-12 linear or branched                             
                                   polyfluoroalkylene group, which comprises reacting an iodofluorocarbon                               
                                   of the formula InRfI wherein n and Rf are as defined  above, with hydrogen                           
                                   at a temperature of not higher than 4500C. in a gas phase.                                           
                                   The method according to claim 1, wherein the reaction is carried out in the                          
                                   absence of a catalyst.                                                                               
                               When, for example,                                                                                       


                    3  Note the discussion in Oharu (col. 4, lines 4-56) on conducting the reaction in the                              
                    absence of a catalyst.  The catalyst, which can be selected from “conventional                                      
                    hydrogenation catalysts”, is employed as a means of increasing the efficiency of the                                
                    reaction.  However, when considering other factors, such as the complexity of the                                   
                    structure of the reactor or post treatment of the waste catalyst, it may be preferable not to                       
                    use a catalyst.  This is the type of evidence which, if it had been available in the prior art,                     
                    would have strengthened examiner’s prima facie case of obviousness over Haszeldine.                                 
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