Appeal No. 2002-2283
Application No. 08/882,513
fluorides. Therefore, the examiner erred in concluding that “[t]he
instant invention is claiming halo alkane [sic] which includes
fluorine as taught by the prior art” (EA 8 (examiner’s emphasis)).
Second, we find that Hayase’s process of making
N-(2-fluoroethyl)aniline differs from the claimed process in at
least two ways. Hayase’s compounds differ by at least one carbon
in the I,a -dihaloalkane starting material. Next, Hayase’s process
does not start with a I,a -dihaloalkane or I,a -dihaloalkene having
two displaceable halides excluding fluoride. Therefore, at least
as to the latter difference, the examiner’s analysis of the scope
and content of the applied prior art disclosure is erroneous.
Third, because Hayase’s teaching is directed to insecticidal
or microbiocidal N-(2-fluoroethyl) amines, not to insecticidal or
microbiocidal N-haloalkylamines, Hayase, by itself, reasonably
would not have taught persons having ordinary skill in the art that
other N-haloalkylamines are insecticidal or microbiocidal, or have
motivated persons having ordinary skill in the art to make and use
other N-haloalkylamines for that same utility. Absent hindsight,
nothing in the Periodic Table of Elements (EA 8) would have made
up for the deficiencies in Hayase’s teaching. Accordingly, the
examiner repeatedly erred in holding that (EA 5):
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