Appeal No. 1995-4851
Application 08/167,656
The examiner points out that both the Manzer and
Groppelli catalysts are gas phase hydrofluorination catalysts
which have fluorinated alumina supports and which may contain
nickel, and that Manzer discloses that his catalyst can be
used to react both
a halogenated ethane reactant and a trichloroethylene reactant
(answer, page 6). The examiner argues that it is reasonable
to assume that Groppelli’s catalyst would be useful to react
HF with Manzer’s trichloroethylene and that one of ordinary
skill in the art would have had a reasonable expectation of
obtaining a result which is similar to that obtained by Manzer
(see id.).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
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