Appeal No. 2006-1161
Application No. 10/322,254
The Level of Skill in the Art
The level of skill in the art is not challenged and is reflected in the references
cited in the case and the Examiner’s statements regarding the general knowledge in the
art. See Answer passim.
The Differences Between the Prior Art and The Claims At Issue
The following limitations in claim 1 are not expressly disclosed in Kimoto or
Lewis:
1) “separating unreacted X-Rf-COF from a mixture of addition products of
hexafluoropropylene oxide (HFPO) and X-Rf-COF” (step c);
2) repeating step a) using unreacted X-Rf-COF separated in step c) (step d); and
3) maintaining X-Rf-COF reactant in molar excess of HFPO by at least 10% during
the reaction (step b).
The following additional limitations in claims 2-5 and 11-19 are not
expressly disclosed in Kimoto or Lewis:
1) Each of claims 2-5 and 11-19 additionally require that the selectivity for the
monoaddition product be 90% or greater; and
2) Claims 4, 5, 13 and 14 each add the limitation that the molar yield of the
monoaddition product (based on HFPO) be 75% or greater.
The § 103(a) Determination In View Of These Graham Findings
In view of the differences between the pending claims and the prior art, the teachings
and/or suggestions in the two cited references and the general knowledge in the art, the
Examiner found that one of ordinary skill in the art would have been motivated to:
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