Appeal No. 95-1256
Application No. 08/043,917
based hydrogenation catalysts, are clearly distinguished from the Haszeldine reactions
discussed at page 3766 which use a Raney nickel catalyst.” That passage reads:
Replacement of Iodine in fully Fluorinated Iodoalkanes by Hydrogen, Chlorine,
Bromine, or Fluorine. – (a) By hydrogen. Alcoholic potassium hydroxide (400% of 10%)
was heated with the fluoro-iodide (3 g.) at 100-1300 for 10 hr. to give the corresponding
1H-fluorocarbons shown in the Table:… The compounds C3F7H, C4F9H, and C5F11H were
also obtained (>80%) by reaction of the corresponding fluoro-iodides with hydrogen (60
atm.) at 3500 in the presence of Raney nickel catalyst. . . .
Resolving whether Haszeldine discloses using a catalyst or not will determine if a
prima facie case of obviousness has been established. To that end we are mindful that
The ever present question in cases within the ambit of 35 U.S.C. 103 is whether
the subject matter as a whole would have been obvious to one of ordinary skill in
the art following the teachings of the prior art at the time the invention was made.
It is impermissible within the framework of section 103 to pick and choose from
any one reference only so much of it as will support a given position, to the
exclusion of other parts necessary to the full appreciation of what such reference
fairly suggests to one of ordinary skill in the art. In re Wesslau, 353 F.2d 238,
241, 147 USPQ 391, 393 (CCPA 1965)
To meet the examiner’s burden of establishing a prima facie case, the examiner
relies on a passage disclosing a reaction “with hydrogen at 3500C” (Haszeldine, p. 3763).
This is relied on to the exclusion of a later more explicit instruction to conduct the
reaction with “hydrogen (60 atm.) at 3500C in presence of Raney nickel catalyst”
(Haszeldine, p. 3766). Examiner ignores the fact that the latter passage is included within
a section called “EXPERIMENTAL” (p. 3764) and, as the smaller print suggests,
explains in further detail what the earlier disclosure summarizes. It is clear that, after
reading Haszeldine in its entirety, the earlier passage is an abridged version of the only
method Haszeldine contemplates - one which uses a Raney nickel catalyst.
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