Ex parte RAO et al. - Page 7




          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              
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