Appeal No. 2006-1161
Application No. 10/322,254
(1) perform steps c) and d) of claim 1;
(2) maintain X-Rf-COF reactant in molar excess of HFPO by at least 10%
during the reaction; and
(3) obtain the selectivity and molar ratios claimed in claims 2-5 and 11-19.
Final Office Action at 4-5; Answer at 5-7. Based on these findings, the
Examiner concluded that the claims are unpatentable under 35 U.S.C. § 103(a).
Thus, the issue before us is whether the evidence of record supports the
Examiner’s prima facie case of obviousness.
Step c) requires “separating unreacted X-Rf-COF from a mixture of addition
products of hexafluoropropylene oxide (HFPO) and X-Rf-COF.” See claim 1. With
respect to this limitation, it is the Examiner’s position that step c) is “inherently taught by
Kimoto.” Answer at 4. Appellant responds: “Since Kimoto exemplifies the use of a
molar excess of HFPO, unreacted X-Rf-COF is not expected, and thus Kimoto cannot
anticipate the step of ‘separating unreacted X-Rf-COF.’ Kimoto is in fact silent as to the
fate of any unreacted X-Rf-COF in Examples 2 or 4, or as to whether any exists or is
expected.” Brief at 9.
The Examiner responds to Appellant’s argument as follows:
First, the X-Rf-COF does not need to be in excess in order [to] have a
portion of it remain unreacted. Second . . . , many chemical reactions
do not obtain 100% conversion of their chemical reactants. Thus, the
products usually contain some unreacted starting material. In Example
2 of Kimoto, the reaction mixture is disclosed as separating into two
layers and then subjecting the lower to distillation, a well known
purification technique, thus isolating the desired product. Although,
Kimoto does not explicitly teach that the unreacted starting materials,
i.e., the HFPO and FSO2(CF2)nCOF, are present in the upper layer
and/or fraction(s)separated from the lower layer, the ordinary skilled
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