Appeal No. 2002-1618
Application No. 09/051,746
of obviousness of the claimed process. Van Der Puy describes a process of preparing
hexafluoropropane, which is a different product from the product prepared by the
claimed process and employs different starting materials. Van Der Puy alone does not
enable a process for the production of 1,1,1,3,3-pentafluoropropane. In re Hoeksema,
399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968) [References relied upon to
support a rejection under 35 U.S.C. § 103 must provide an enabling disclosure, i.e.,
they must place the claimed invention in the possession of the public.] See also In re
Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA 1979); In re Brown, 51 CCPA
1254, 1259, 329 F.2d 1006, 1011, 141 USPQ 245, 249 (1964). An invention is not
“possessed” absent some known or obvious way to make it. Without more, in our view,
Van Der Puy alone does not support a prima facie case of obviousness.
II. Although not set forth in the statement of rejection, from the analysis
presented in the Examiner's Answer, the examiner appears to rely on the acknowledged
state of the prior art referred to in the preamble of the Jepson-type claims as well as
Van Der Puy as a basis for the rejection of the claims. A preamble is impliedly admitted
to be prior art when a Jepson claim is used, unless the preamble is the inventor's own
work. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d
645, 649, 228 USPQ 1168, 1172 (Fed. Cir. 1984). Pentec, Inc. v. Graphic Controls
Corp., 776 F.2d 309, 315, 227 USPQ 766, 770 (CA FC 1985). Appellants' submission
of the claims in Jepson format is accepted as an admission that a process for the
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