Appeal No. 1996-0683 Application 08/116,938 of activated carbon for the preparation of unsaturated fluorocarbons by defluorinating perfluoro compounds. While the former shows preparation of a fluorinated compound similar to that claimed, the latter indicates that synthesizing various fluorine-substituted alkenes are known. If the claimed compound described in the Zhanxun references is no more than the isomerized product of the former or the hydrogenated product of the latter, a prima facie case of enablement may be demonstrated with respect to the Zhanxun references. Note also that we have not considered the merits of Hudlicky and Sheppard since they were not relied upon in the statement of the rejection provided in the Answer. Upon return of this application, the examiner is to determine whether any combination of the Zhanxun and the above-mention references affect the patentability of the claimed subject matter under 35 U.S.C. § 102(b). This determination necessarily requires consideration of the above- mention references, together with the Zhanxun references, for the purpose of determining enablement of the Zhanxun references under 35 U.S.C. § 112, first paragraph. Any prior art references relied upon by the examiner must be included in -7-Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007