Appeal No. 2002-1584 Page 3
Application No. 09/283,449
combination."
In rejecting these claims on prior art grounds, the examiner relies heavily on
Example 58 of Webster. The examiner argues that (1) the reported results of a
reaction, described by Webster in Example 58, include 45.8% CF3CClFCF31; and (2)
"[t]he presence of HF [hydrogen fluoride] in the product is assured do [sic] to the use of
an excess in the reaction and the inevitability of incomplete conversion of the starting
material" (Paper No. 12, page 4, lines 12 and 13).
Conspicuous by its absence from the Examiner's Answer, however, is an
adequate explanation why or how a person having ordinary skill would have arrived at
the "azeotrope or azeotrope-like composition" of claims 10, 26, and 28 or the
"azeotropic combination" of claim 27. It is as though the examiner finds it sufficient that
Webster describes a composition containing hydrogen fluoride and CF3CClFCF3. But
that is not enough. On the contrary, every limitation in the claims must be given effect
rather than considering one in isolation from the others. In re Geerdes, 491 F.2d 1260,
1262, 180 USPQ 789, 791 (CCPA 1974). Simply stated, Example 58 of Webster
constitutes insufficient evidence to support a finding of anticipation of claim 10, or to
support a conclusion of obviousness of claims 10 and 26 through 28, because Webster
does not disclose or suggest the "azeotrope or azeotrope-like composition" or
1 In Example 58 of Webster, the results are expressed in gas chromatograph
area %.
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