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%. 10Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 NextLast modified: November 3, 2007