Appeal No. 1997-1959
Application 08/351,908
had a reasonable expectation that a supported palladium catalyst, including palladium supported on
aluminum fluoride or fluorinated alumina as taught by Kellner I, would successfully hydrodechlorinate the
known reactant 2,2-dichlorohexafluoropropane (CF3CCl2CF3) to obtain the expected, known products
2,2-dihydro-hexafluoropropane (CF3CH2CF3) and/or 2-chloro-2-hydrohexafluoropropane
(CF3CHClCF3) using conditions taught in the references. Further, with respect to the product
limitations of claim 8, we agree with the examiner that one of ordinary skill in this art would have
optimized conditions for the palladium catalyst, regardless of the support, with respect to obtaining the
optimum yield of the desired product(s). While appellant focuses on the teachings of Smith with respect
to olefinic products obtained in using palladium on activated carbon, we find that this reference clearly
would have taught one of ordinary skill in this art that the saturated product 1,1,1,3,3-
pentafluoropropane (CF3CH2CHF2) can be obtained with at least the substantial elimination of the
unsaturated products, with the appropriate selection of result effective variables (e.g., cols. 2-3). Thus,
we agree with the examiner that the results of specification Comparative Runs No. 6 and 7, based on
the combinations of one temperature and two hydrogen flowrates, as explained in the specification, do
not adequately reflect the teachings of Smith. Therefore, in the absence of an explanation of the
significance of the results obtained in the specification Comparative Runs, appellant’s unsupported
allegation in the brief (page 11) that this evidence establishes that “very different results [are] obtained
when using different palladium supports” does not establish that the results obtained with palladium
supported on fluorinated alumina are unexpected vis-à-vis the combined teachings of Kellner I and
Smith,3 and in any event, does not establish that such evidence based on limited variation in process
parameters and catalyst is commensurate in scope
3 It is well settled that the burden of establishing the significance of data in the record, with respect to
unexpected results rests with appellant, which burden is not carried by mere arguments of counsel. See
generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re
Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986); In re Longi, 759 F.2d
887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Klosak, 455 F.2d 1077, 1080, 173
USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA
1971).
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