Ex parte RAO - Page 5




               Appeal No. 95-0798                                                                                                    
               Application 08/042,200                                                                                                


               No. 5,243,105 to Scott issued September 7, 1993 as evidence to that fact (see col. 2, lines 24-42).                   
               On page 4, lines 3-14 of the specification, appellant discloses numerous examples of what constitutes                 
               a  “fluorination catalyst.”  According to appellant,                                                                  
                       [c]atalysts which may be used in accordance with this invention include alumina;                              
                       fluorided alumina; aluminum fluoride; metals supported on alumina; metals supported                           
                       on aluminum fluoride; magnesium fluoride supported on aluminum fluoride; metals                               
                       supported on fluorided alumina; alumina on carbon; aluminum fluoride on carbon;                               
                       fluorided alumina on carbon; metals supported on carbon; chromium catalysts;                                  
                       mixtures of metal halides, aluminum fluoride, and graphite; and chromium-magnesium                            
                       optionally supported on graphite.  Suitable metals include chromium, Group VIII                               
                       metals (e.g., iron, cobalt and/or nickel), Group VIIB metals (e.g., manganese), Group                         
                       IIIB metals (e.g., lanthanum), and zinc.                                                                      
               Appellant further cites patents which teach how to make a fluorided alumina catalyst, a aluminum                      
               fluoride catalyst, catalysts comprising metals on aluminum fluoride or fluorided alumina, chromium                    
               catalysts such as mixtures of chromium and magnesium, and chromium on carbon.   While appellant                       
               has not specifically disclosed every known fluorinated catalyst which will work  in the claimed                       
               process, there is no such requirement contemplated under the statute.  See In re Angstadt, 537 F.2d                   
               498, 502-504, 190 USPQ 214, 218 (CCPA 1976).  Accordingly, we find that appellant has presented                       
               sufficient direction and guidance such that a person having ordinary skill in the art could practice the              
               invention without an undue amount of experimentation.                                                                 
                       Most of the catalysts set forth on page 4 of the specification are recited in appealed claim 2                
               from which claims 3-6 depend while claim 11 encompasses only some of the listed catalysts.  The                       
               examiner asserts that the recitation of catalysts in claim 2 is unduly broad in that                                  
                       ... the recitation of “chromium catalysts” is virtually limitless including catalysts                         
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