Appeal No. 1996-0683
Application 08/116,938
state whether or not the claimed compound is made. Nor do
they state that the claimed compound can be produced by well
known methods. The examiner states (Answer, pages 4 and 5)
that:
the prior art compound may be produced by any number
of well known synthesis procedures utilizing any
number of well known starting materials. For
instance, one well known olefin starting material
which may be utilized in the production of the prior
art compound is disclosed in the instant
specification at page 22, lines 29+. The reaction
of this known olefin with HF under a wide range of
well known hydrofluorination conditions would be
expected to produce at least some of the prior art
compound.
The examiner’s statement, however, is not supported by factual
evidence. Thus, on this record, we are constrained to agree
with appellants that the examiner has not demonstrated a prima
facie case of enablement with respect to the relied upon prior
art references.
In reaching this conclusion, we also note the examiner’s
reliance on Hudlicky and Sheppard, two of the three references
referred to by appellants, at pages 5 and 6 of the Answer.
However, these references have not been relied upon in the
statement of the rejection provided in the Answer.
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