Appeal No. 95-0798
Application 08/042,200
wherein the chromium may be present in minor amounts with any number of other
active components. Furthermore, the definition for “metal” is unduly broad in that it
would result in literally thousands of catalyst compositions. This is so in view of the
fact that recitations such as “metals on carbon” are not limited to single metal
compositions but include an unspecified number of metals from within the broad
groups recited.
It is noted that there are no specific catalysts listed in claim 2 except for cobalt
and the assumption that all known “fluorination catalyst(s)” would function in the
unpredictable manner required by the claimed process is incredible based upon this
limited disclosure.
The recitation “comprises aluminum fluoride” (claim 3) does not overcome
the deficiencies of the enablement in the specification in that the use of “comprises’
results in a claim which does not exclude the “metals supported on aluminum
fluoride” of claim 2 from which it depends and therefore is not supported by an
adequate enabling disclosure for the reasons described above for claim 2.
The catalyst used in the process of claim 11 is virtually identical in scope to
that used in the process of claim 2 and is deficient for the reasons given above for
claim 2. [Answer: p. 4-5; emphasis in the original.]
We cannot agree with the examiner. While the examiner correctly presumes that the recitation of
“fluorinated catalyst” in claim 1 which includes “chromium catalysts” and Groups IIIB, VIIB and
VIII metals on carbon, graphite, alumina, aluminum fluoride, and fluorided alumina supports must
be taken as an implied assertion by appellant that all members of this particular class of catalysts can
be employed in the claimed process, the breadth of “fluorinated catalyst”, “chromium catalysts”, or
“metals” should be of no concern to the examiner. It is the accuracy and truth of the implied
assertion which should be the only concern of the examiner. The requirement of 35 U.S.C. § 112,
first paragraph is nothing more than an objective enablement. On the record before us, the examiner
has not presented any scientific reasoning or evidence to create a reasonable doubt on the accuracy
and truth of the statements contained in the specification regarding the use of fluorination catalysts
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