Appeal No. 2003-1241 Page 4
Application No. 09/808,433
of the claimed composition compared to that of [the] mixture disclosed in Olive . . .[as
shown in the Schertl declaration] for the purpose of illustrating that the compositions
[i.e., of appealed claim 1 and Olive] are inherently different”.
In light of the foregoing, it is apparent that the pivotal issue on this appeal is
whether the record before us supports a determination that the here claimed
composition is indistinguishable from the composition which is ultimately formed in the
catalyst-containing reaction mixture of Olive. From our perspective, a reasonable basis
exists for believing, as the examiner does, that Olive’s soluble iron complex of
cyclopentadienyl iron dicarbonyl dimer, while in the dichlorobutene reaction mixture,
ultimately disassociates into constituents corresponding to those formed when the
appellants’ iron carbonyl and cyclopentadiene derivative are admixed with 1,4-dichloro-
2-butene and/or 3,4-dichloro-1-butene pursuant to appealed claim 1. Further, the
appellants do not contest the reasonableness of the examiner’s aforementioned belief.
Instead, the appellants have submitted the Schertl declaration of record in an attempt to
show that their claimed composition in fact is different from the composition formed
during use of Olive’s catalyst. This attempt by the appellants is in conformance with
well established legal principles.
To wit, it is well settled that, where the claimed and prior art products, such as
the compositions under review, are identical or substantially identical, the Patent and
Trademark Office can require an applicant to prove that the prior art products do not
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