Appeal No. 95-0798
Application 08/042,200
the art. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404, (Fed. Cir. 1988), citing with
approval Ex parte Forman, 230 USPQ 526, 547 (Bd. Pat. App. & Int. 1986). The burden is on the
examiner to establish a reasonable basis to question the adequacy of appellant’s disclosure. In re
Marzocchi, 439 F.2d 220, 223-224, 169 USPQ 367, 370 (CCPA 1971). On the record before us,
we are not persuaded that the examiner has met this burden.
While catalytic processes can be unpredictable, the examiner’s broad assertion of
unpredictability based on the fact the number of fluorinated catalysts is virtually limitless, without
more, is not dispositive on the question of undue experimentation. The examiner has not explained
how the relative skill of those in the art would have found the claimed process to be unpredictable
so as to necessitate undue experimentation in view of the numerous “suitable” fluorinated catalysts
disclosed by appellant on page 4 of the specification. In addition, the examiner has not explained how
much experimentation is necessary and why extensive experimentation and the nature of the invention
would require undue experimentation. Furthermore, the examiner has not provided evidence and/or
presented scientific reasoning with reference to the state of the prior art which would have led a
person having ordinary skill in the art to question why all known fluorinated catalysts could not be
employed in the practice of the claimed process.
Appellant has presented two working examples in his specification. The first example uses
an alumina catalyst while the second example uses a fluorided alumina catalyst. The examiner has
not found these examples to be non-enabling. Appellant states that “fluorination catalysts” are known
in the art in processes involving the fluorination of fluorochloroethane compounds and cites Patent
4
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