Appeal No. 95-1256
Application No. 08/043,917
Even if the latter passage did not further describe the process, the earlier
disclosure alone could not support a prima facie case of obviousness. “To establish a
prima facie case of obviousness based on a combination of the content of various
references, there must be some teaching, suggestion or motivation in the prior art to make
the specific combination that was made by the applicant”. In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). The aforementioned earlier passage is
directed to a reaction “with hydrogen at 3500C”. A specific step of conducting the
reaction in the absence of a catalyst is missing. To support a prima facie case of
obviousness against appellants’ noncatalyst process, first, examiner would have to fill the
missing disclosure by showing that hydrogenation reactions can be successfully practiced
without a metal catalyst and, second, provide some motivation for doing so when
conducting Haszeldine’s hydrofluoro compound-producing process. Examiner’s rejection
relies wholly on Haszeldine without explaining why one of ordinary skill in the art would
have been motivated to conduct the reaction as claimed.
For the stated reasons, a prima facie case has not been established and therefore
the rejection involving Haszeldine is reversed.
Other Issue
We advise the examiner to consider the following issue and to take appropriate
action. Examiner should consider whether the question of an interference between this
appli-cation (filed April 7, 1993) and US Patent No. 5,648,568 (Ohura, filed June 5,
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