Appeal No. 1997-1821
Application No. 08/460,023
the “reasonable expectation” of obtaining vinyl fluoride or a
derivative (Answer, pages 5-6). We disagree.
The examiner recognizes that Elsheikh is limited to a single
starting material, namely 1,1,1-trifluoroethane (Answer, pages 3-
4). The examiner also recognizes that the specific starting
materials required by claim 1 on appeal differ from this starting
material of Elsheikh (Answer, page 4). The examiner does not find
that the starting materials of Elsheikh are structurally similar
to those recited in the claims on appeal but only finds that these
starting materials are “analogous” (id.). We determine that the
examiner has failed to show any motivation one of ordinary skill
in the art would have possessed to use the starting materials of
the claims on appeal in the Elsheikh process, nor has the examiner
established that one of ordinary skill in this art would have had a
reasonable expectation of success in using the starting materials
of the claims in the Elsheikh process. See In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Elsheikh specifically teaches that the “presence of HCl in
the process of this invention makes the result unpredictable.”
See col. 1, ll. 31-32. Elsheikh discloses that using an HCl
reactant readily forms chlorine gas by oxidation in air,
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