Appeal No. 2002-1618
Application No. 09/051,746
preparation of 1,1,1, 3,3-pentafluoropropane comprising reaction of 1,1,1,3,3-
pentachloropropane with hydrogen fluoride in the presence of a hydrofluorination
catalyst, can be considered "prior art" for any purpose, including use as evidence of
obviousness under § 103. In re Nomiya, 509 F.2d 566, 570-571, 184 USPQ 607, 611
(CCPA 1975); In re Garfinkel, 437 F.2d 1000, 1004, 168 USPQ 659, 662 (1971); In re
Hellsund, 474 F.2d 1307, 1311, 177 USPQ 170, 173 (1973).
Therefore, for a thorough and complete review of the issues before us, we also
address the combination of admitted prior art in the preamble of the Jepson claim
before us with Van Der Puy. Here too, however, we find the examiner's case fall short.
The crux of the examiner's position is that an “analogy” exists between (1) the
process of preparing 1,1,1,3,3,3-hexafluoropropane by reacting 1,1,1,3,3,3-
hexachloropropane with hydrogen fluoride in the presence of a hydrofluorination
catalyst, and (2) the known process of preparing 1,1,1,3,3-pentafluoropropane by
reacting 1,1,1,3,3-pentachloropropane with hydrogen fluoride in the presence of a
hydrofluorination catalyst. The appellants argue that persons of ordinary skill in the art
would not have employed the reaction conditions of Van Der Puy in the prior art process
of preparing 1,1,1,3,3- pentafluoropropane set forth in the preamble of the claim with a
reasonable expectation of success.
Appellants strenuously argue that, on the record before us, any such analogy is
inexact, or, in appellants' words, “[t]he record is devoid of evidence to support the
conclusion of such an analog[y].” Brief, page 9.
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