Ex parte BARKER et al. - Page 5




          Appeal 97-2360                                                               
          Application 08/234,495                                                       

          with Simmonds or Friswell in connection with tracing of                      
          hydrocarbons.                                                                
               Simmonds admittedly deals with tracers.  But, its tracers               
          do not fall within the scope of the claims on appeal.                        
               Begley while showing the interchangeability of                          
          perfluorocycloalkanes (e.g., perfluoromethylcyclohexane) and                 
          perfluorobicyclic compounds (e.g., perfluoroadamantane), does                
          so in the context of a study for the detection of a range of                 
          perfluorocarbon tracers suitable for long-range atmospheric                  
          studies.                                                                     
               Applicants concede that a process similar to their                      
          process is known, but that process uses chlorohydrocarbons and               
          chlorofluorocarbons, both of which are known to have adverse                 
          effects on the ozone layer (specification, page 1, lines 10-                 
          20).  For that reason, it is true that one might be motivated                
          to use perfluoro compounds which are known to overcome the                   
          ozone problem.  The difficulty is that applicants' perfluoro                 
          compounds are used in amounts considerably smaller than the                  
          admitted prior art described in the specification.                           
               In the end, what surfaces in this case is that one                      
          skilled in the art needs the road map of applicants'                         

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