Appeal No. 95-1256
Application No. 08/043,917
We direct our attention to the grounds of rejection set forth in the examiner’s
answer (paper no. 10, mailed June 6, 1994). Rejections under 35 U.S.C. § 103 over the
Olstowski reference (US Patent 3,042,727) and under 35 U.S.C. § 112, second paragraph,
from the Final Rejection (Paper No. 5, mailed November 23, 1993) have been dropped.
The sole reference relied on is:
R.N. Haszeldine (Haszeldine), “Reactions of Fluorocarbon Radicals. Part XII. The
Synthesis of Fluorocarbons and of Fully Fluorinated Iodo-, Bromo-, and
Chloroalkanes.”, J. Chem. Soc. (July 13, 1953), pp. 3761- 3768.
The claims under appeal stand rejected as follows:
Claims 1-16 are rejected under the enablement requirement of 35 U.S.C. § 112, first
paragraph.
Claims 1-16 are rejected under 35 U.S.C. § 103 over Haszeldine.
DISCUSSION
Enablement
The examiner (examiner’s answer, sentence bridging pp.
4-5) states that it “would require undue experimentation to
determine the combinations or reaction parameters which
would give the desired result for each of the myriad
starting materials having diverse structures included by the
instant claims.” In effect, the examiner’s position is that
the specification does not provide the necessary information
to determine the appropriate conditions to produce each and
every species broadly encompassed by the claimed formula.
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