Appeal No. 1997-0551
Application 08/157,429
starting materials and product made. When the starting and/or
product materials of the prior art differ from those of the
claimed invention, the examiner has the burden of explaining
why the prior art would have motivated one of ordinary skill
in the art to modify or select from the materials of the prior
art processes so as to arrive at the claimed invention. See
Ochiai, 71 F.3d at 1570, 37 USPQ2d at 1131. In the present
case, the examiner has not carried this burden.
In particular, we note that the examiner has not
adequately explained how and why one of ordinary skill in the
art would have been led to modify the process of Yale by
employing
the catalyst of Seigneurin so as to arrive at appellants’
process as called for in any of the claims on appeal (answer,
pages 4-7).
Concerning this matter, we observe that the examiner is of the
opinion that Yale discloses a process identical to appellants’
claimed process including the reaction of tetrafluoroethylene
with dichlorofluoromethane using barium fluoride catalyst to
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