Appeal No. 95-1256
Application No. 08/043,917
The specification provides adequate guidance to the technician of ordinary skill to
practice the embodiments covered by the claims. Through routine experimentation, one
can determine the hydrogenolysis conditions, among all those encompassed by the claims,
which, when applied to one of the claimed iodo starting materials, would obtain the
corresponding hydrofluro compound product.
Obviousness
All the pending claims are rejected over Haszeldine.
Claim 1, the sole independent claim, teaches “reacting an iodide compound . . . with
hydrogen at . . . about 4000C or less in the absence of metal-based hydrogenation
catalysts.” Appellants (brief, p. 9) admit that they “have not distinguished the Claim 1
process from the Haszeldine process on the basis of reactants” and since Haszeldine
teaches (pp. 3763 and 3766) reacting fluoro-iodide compounds with hydrogen at 3500C,
the prima facie case of obviousness depends on whether Haszeldine suggests conducting
the reaction in the absence of metal-based hydrogenation catalysts.
According to the examiner (examiner’s answer, paper no. 10, p. 7, lines 5-6),
“Haszeldine discloses a process wherein no catalyst is disclosed (page 3763)”. The
passage in question reads:
The fully fluorinated iodoalkanes are converted into the corresponding 1H-compounds
by reaction with alcoholic potassium hydroxide at ca. 1000 (cf. Banus, Emeleus, and
Haszeldine, J., 1951, 60), or with hydrogen at 3500.
Appellants (brief, p. 9) argue that “the present claims which recite the absence of metal-
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