Appeal No. 1997-1959
Application 08/351,908
obtained when using different palladium supports,” pointing out that “if olefins are formed at a
temperature of 150°C [as in Smith], then it is likely that larger amounts of olefins might well be formed
at higher temperatures under otherwise the same reaction conditions” as demonstrated in Smith (id.,
page 11).
In response to appellant’s arguments, the examiner submits that “[t]here is no evidence of
record that the starting material of the instantly claimed process is responsible for an unexpected and
unobvious result” when using catalysts of palladium on an aluminum fluoride or fluorinated alumina
support taught in Kellner I, and because both Kellner I and Smith teach palladium based catalysts, one
of ordinary skill in this art would have expected similar results when using these catalysts (answer, pages
7-8). The examiner further contends that the conditions of Smith were not used in the specification
Comparative Runs, with respect to which the specification “simply states that ‘an olefin and/or a
saturated product containing one less fluorine than the starting compound can be produced’” (answer,
page 8; see specification, page 6, lines 23-30), and that “optimum conditions would vary for catalysts
using different supports but the determination of those optimum conditions are well within the skill of the
ordinary artisan” (id., page 8).
We must agree with the examiner that appellant’s arguments and evidence in the specification
are not persuasive. We initially note that claim 1 requires only that the claimed process obtains the two
specified products without limitation on or exclusion of other three-carbon products and that claim 8
does specify limitations on but not exclusion of other three-carbon products. These claims further
specify only the presence of hydrogen, “an elevated temperature of about 300°C or less,” and a
“catalytically effective amount” of the specified catalyst. Indeed, according to specification Runs No. 1
through 5, as set forth in Run No. 1, “[t]he hydrogen-containing products included” the two products
specified in claim 1 “in addition to very small quantities of other products,” such that the “quantities of
other products” of these runs, which involved combinations of three different temperatures and two
different hydrogen flowrates, ranged from 1.7% to 7.5% (page 5).
Thus, in the absence of additional process parameter limitations and product limitations in claim
1 and claim 8, we must agree with the examiner that appellant has not established on this record that
one of ordinary skill in the art following the combined teachings of Kellner I and Smith would not have
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