Appeal No. 2002-2283
Application No. 08/882,513
It would have been obvious to one skilled in the art
to prepare additional haloamines by reacting any
I,a -dihaloalkane or I,a -dihaloalkene, because [the]
reference teaches the process of making haloamines by
reacting a dihaloalkane with an amine. It would be
expected to prepare haloamines by reacting any amine or
mixtures of amine with dihaloalkane or dihaloalkene or
their mixtures.
Where there are no express teachings in Hayase to support
the appealed rejection, the examiner relies on legal precedent for
the proposition that obviousness may be inferred (EA 9):
. . . the difference of only one carbon would be
expected to posses [sic] [the] same properties as they
[sic] are considered structurally close (homolog).
At the time of the invention it would have been obvious
to one skilled in the art to use dihaloalkanes
as instantly claimed for the similar reaction to
form haloamines. Note, that I,a -dihaloalkane or
I,a -dihaloalkene differ [sic] from the reference
dihaloalkyl [sic] in the position of [the] halogen
in [the] alkyl chain which would have been obvious to
one skilled in the art.
A reference is good not only for what it teaches
by direct anticipation but also for what one of ordinary
skill might reasonably infer from the teachings. In re
Opprecht, 12 USPQ 2d 1235, 1236 (Fed. Cir. 1989); In re
Bode, 193 USPQ 12 (CCPA 1976). A reference is not limited
to working examples. In re Fracalossi, 215 USPQ 569
(CCPA 1982).
Thus, the examiner argues that it would have been obvious to
substitute other halogens for the fluorine taught by Hayase, and
I,a -dihaloalkanes for the 1-bromo-, 2-fluoroethane taught by
Hayase.
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