Appeal No. 1996-0683
Application 08/116,938
USPQ 245, 249 (CCPA 1964). The claimed invention is not
“possessed” absent some known or obvious way to make it. In
re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968).
Relying on additional prior art references to establish “known
or obvious ways” to make the compound disclosed in the Zhanxun
references does not render a
§ 102 rejection improper. In re Donohue, 632 F.2d 123, 127,
207 USPQ 196, 199 (CCPA 1980); In re Samour, 571 F.2d 559,
562-63, 197 USPQ 1, 4 (CCPA 1978); In re LeGrice, 301 F.2d
929, 939, 133 USPQ 365, 373-74 (CCPA 1962).
In the present case, there is no dispute that the Zhanxun
references describe the claimed compound, CF CF CH CF CF . The
3 2 2 2 3
only dispute between the examiner and appellants is whether
the Zhanxun references are capable, when taken in conjunction
with the knowledge of those skilled in the art, of placing the
claimed compound in the possession of the public. In other
words, do the Zhanxun references, when taken together with the
knowledge of those skilled in the art, provide known or
obvious ways to make the claimed compound.
As stated by appellants, the Zhanxun references do not
-4-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007