Ex parte CORBIN et al. - Page 10




          Appeal No. 1995-4851                                                        
          Application 08/167,656                                                      


          (Fed. Cir. 1992).  The examiner must explain why the prior art              
          would have suggested to one of ordinary skill in the art the                
          desirability of the modification.  See id. at 1266, 23 USPQ2d               
          at 1783-84.                                                                 
               Manzer’s desired product is asymmetric with respect to                 
          fluorine (col. 2, lines 8-12), whereas Groppelli teaches that               
          his catalyst produces a compound which is symmetric as to                   
          fluorine (col. 1, lines 35-46).  In the Manzer declaration                  
          (filed June 29, 1994; paper no. 24, page 4), Manzer states                  
          that one of ordinary skill in the art would not conclude from               
          Groppelli’s disclosure that Groppelli’s catalyst would be                   
          desirable for use in making Manzer’s less symmetric compounds.              
          In the declaration (page 5), Manzer points out that                         
          Groppelli’s Table 1 shows that including zinc in the catalyst               
          greatly enhances the net yield of the more symmetric C F Cl                 
                                                                2 4 2                 
          isomer, CF ClCF Cl, compared to the less symmetric isomer,                  
                    2   2                                                             
          CF CFCl .  The table also shows that when zinc is included in               
            3   2                                                                     
          the catalyst, the net yield of asymmetric CF CCl  is a trace,               
                                                      3   3                           
          whereas when the catalyst does not contain zinc, the net                    
          yields of that compound are 7.7-26%.                                        


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