Appeal No. 2002-1618
Application No. 09/051,746
that the prior art both suggest the claimed subject matter and reveals a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
It is the examiner=s position that (Answer, page 4):
Van Der Puy et al[.] disclose a process wherein a starting material such as
1,1,1,3,3,3-hexachloropropane is reacted with HF in the presence of a
catalyst to produce 1,1,1,3,3,3-hexafluoropropane (Example 3). Van Der
Puy et al[.] further disclose that HCl and 1,1,1,3,3,3-hexafluoropropane
product are vented, in other words removed as gaseous overhead, to
control the pressure (col. 3, lines 15+).
It would have been obvious to one of ordinary skill in the art to
utilize 1,1,1,3,3-pentafluoropropane as starting material in the process of
Van Der Puy to obtain the instant results of appellants. It is again noted
that the use of 1,1,1,3,3,-pentochloropropane to produce 1,1,1,3,3-
pentafluoropropane using the basic process of Van Der Puy is admitted to
be well known in the art by the use of a jepson type claim by appellants.
The only issue is the obviousness of using the method of gas phase
recovery disclosed by Van Der Puy when substituting 1,1,1,3,3-
pentachloropropane as starting material. Clearly, the same benefit of
controlling the pressure would result regardless of the particular starting
material used in the Van Der Puy process by recovering HCl by-product
and the corresponding product by venting. Therefore, one of ordinary skill
in the art would have been motivated to use 1,1,1,3,3-pentachloropropane
starting material in the Van Der Puy process because it is known in the art
to do so to produce the corresponding product utilizing the same
chemistry, namely reaction with HF, and there would have been a
reasonable expectation that the same result would be obtained by venting,
namely the control of pressure.
To begin, we note that the statement of rejection indicates that the pending
claims are rejected in view of a single reference, Van Der Puy. Upon review of the
record, we do not find that the examiner has presented sufficient evidence to support a
prima facie case of obviousness. We find Van Der Puy alone to be insufficient evidence
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