Appeal No. 2003-2023
Application 09/581,440
that, as appellants point out, a perfluorobutyl methyl ether does not consist essentially of 100
weight percent of two perfluorobutyl ethyl ether isomers, and thus would have considered the
term “perfluorobutyl methyl ether” to be typographical error.
Furthermore, even if Flynn ‘595 did in fact disclosure perfluorobutyl methyl ethers in
claim 4 thereof, one skilled in this art would have arrived at an azeotrope-like composition
containing this ether and ethyl acetate only by judicious picking and choosing among the solvents
listed in col. 5 of the reference, which does not result in a description of the claimed invention as
a matter of fact under § 102(b). See generally, In re Arkley, 455 F.2d 586, 587, 172 USPQ 524,
526 (CCPA 1972) (“[F]or the instant rejection under 35 U.S.C. 102(e) to have been proper, the . .
. reference must clearly and unequivocally disclose the claimed compound or direct those skilled
in the art to the compound without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited reference. Such picking
and choosing may be entirely proper in the making of a 103, obviousness rejection, where the
applicant must be afforded an opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the subject matter which he claims to the
prior art, but it has no place in the making of a 102, anticipation rejection.”).
Accordingly, we find that Flynn ‘595 does not, as a matter of fact, disclose a composition
falling within appealed claim 1 in a manner which would have placed one of ordinary skill in the
art in possession thereof, and thus, we reverse the ground of rejection under § 102(b).
In the ground of rejection under § 103(a), the examiner contends that the perfluorobutyl
ethyl ethers of Flynn ‘595 is homologous to the perfluorobutyl methyl ethers of appealed claim 1
and thus, the substitution of the methyl ether for the ethyl ether in the compositions of the
reference would have been obvious, alleging structural similarity, based on the alleged fact that
“[i]t is well known in the chemical are [sic, area] to substitute one alkyl chain for another either
slightly longer or slightly shorter alkyl chain,” and “[i]n the instant case, a substitution of methyl
for ethyl, an alkyl chain on one carbon shorter” (Paper No. 11, page 5; answer, pages 3-5). The
examiner further contends in this respect, that the combination of Flynn ‘595 and Flynn ‘812, the
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
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