Ex Parte Anton et al

Board of Patent Appeals and Interferences

Jun 28, 1999

08043917 (B.P.A.I. Jun. 28, 1999)

1 Application for patent filed April 7, 1993. According to applicants, this application is a
continuation-in-part of Application 07/964,973, filed October 22, 1992, now abandoned.

2 In a previous decision (paper no. 15), the application was
remanded to the examiner for consideration of a Petition and
Information Disclosure Statement. They have now been
considered.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not
written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Douglas R. Anton,
Carl G. Krespan,
and Allen C. Sievert
____________
Appeal No. 95-1256
Application No.08/043,917 1
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH, and LORIN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-16,
which are all of the claims pending in this application.2 On consideration of the record,
we reverse and remand to the examiner with instructions to consider the issue developed
Appeal No. 95-1256
Application No. 08/043,917
2
infra and to take appropriate action.
Representative Claim
Claim 1 is representative of the subject matter on appeal and reads as follows:
1. A process for producing a compound of the formula RCFZH wherein R is
selected from the group consisting of SF5, CF2SF5 and RfCF2Y, wherein Rf is a
perfluoroalkylene group containing from 1 to about 12 carbon atoms and optionally
containing one or more ether oxygen atoms, Y is selected from the group consisting of H,
F and SF5, and Z is selected from the group consisting of F, CH3 and CF2CF3 comprising:
reacting an iodide compound of the formula R’CFZI with hydrogen at an elevated
temperature of about 4000C or less in the absence of metal-based hydrogenation catalysts,
wherein R’ is selected from the group consisting of SF5, CF2SF5 and RfCF2X and wherein
X is selected from the group consisting of H, F and SF5 and I, provided that when Y is F,
X is F, when Y is SF5, X is SF5 and when Y is H, X is H or I.
Background
As the representative claim indicates, the claimed invention is directed to the
production of hydrofluoro compounds containing carbon or carbon and sulfur atoms. In
particular, the “invention provides a process for producing monohydro and dihydro
compounds from corresponding monoiodo and diiodo compounds” (specification, p. 3,
lines 6-8) by way of a hydrogenolysis reaction “accomplished in the absence of
hydrogenation catalysts” (specification, p. 5, line 16).
Grounds of Rejection
Appeal No. 95-1256
Application No. 08/043,917
3
We direct our attention to the grounds of rejection set forth in the examiner’s
answer (paper no. 10, mailed June 6, 1994). Rejections under 35 U.S.C. § 103 over the
Olstowski reference (US Patent 3,042,727) and under 35 U.S.C. § 112, second paragraph,
from the Final Rejection (Paper No. 5, mailed November 23, 1993) have been dropped.
The sole reference relied on is:
R.N. Haszeldine (Haszeldine), “Reactions of Fluorocarbon Radicals. Part XII. The
Synthesis of Fluorocarbons and of Fully Fluorinated Iodo-, Bromo-, and
Chloroalkanes.”, J. Chem. Soc. (July 13, 1953), pp. 3761- 3768.
The claims under appeal stand rejected as follows:
Claims 1-16 are rejected under the enablement requirement of 35 U.S.C. § 112, first
paragraph.

Claims 1-16 are rejected under 35 U.S.C. § 103 over Haszeldine.
DISCUSSION
Enablement
The examiner (examiner’s answer, sentence bridging pp.
4-5) states that it “would require undue experimentation to
determine the combinations or reaction parameters which
would give the desired result for each of the myriad
starting materials having diverse structures included by the
instant claims.” In effect, the examiner’s position is that
the specification does not provide the necessary information
to determine the appropriate conditions to produce each and
every species broadly encompassed by the claimed formula.
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In considering this issue, we note that appellants are
not required to disclose every parameter encompassed by the
claims. See In re Angstadt, 537 F.2d 498, 190 USPQ 214
(CCPA 1976). However, there must be sufficient disclosure,
either through illustrative examples or terminology to teach
those of ordinary skill in the art how to make and use the
invention as broadly as it is claimed. See In re Vaeck, 947
F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). It is the
examiner’s burden to show that one skilled in the art would
have to resort to undue experimentation in order to practice
the invention as broadly claimed. Here, speculation, rather
than a persuasive legal or technical reason, has been given
as to why the specification does not reasonably enable one
skilled in the art to practice the invention as broadly as
it is claimed and without undue experimentation. See In re
Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971).
The specification gives 5 Examples (pages 8-11)
describing in detail starting materials, reactors, reaction
temperatures and pressures, and accompanying cooling,
warming and evacuating steps. The reaction conditions,
including preferred temperatures, mole ratios for the
starting materials, and the hydrogen, are clearly described
in the specification (pp. 6-7). Furthermore, the
hydrogenolysis technology of the examples and specification
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Application No. 08/043,917
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is not an unpredictable art (see Background of the
Invention, specification, p. 1, lines 14-34). See In re
Fisher, 427 F.2d 833, 166 USPQ 18 (1970), where the court
stated that the scope of enablement varies inversely with
the degree of unpredictability of the involved factors.
While some experimentation may be required to determine the
right conditions for particular starting materials, we do
not consider such experimentation to be undue. As explained
in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558,
1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996):
In unpredictable art areas, this court has refused to find broad generic claims enabled
by specifications that demonstrate the enablement of only one or a few embodiments
and do not demonstrate with reasonable specificity how to make and use other
potential embodiments across the full scope of the claim. See, e.g., In re Goodman,
11 F.3d 1046, 1050-52, 29 USPQ2d 2010, 2013-15 (Fed. Cir. 1993); Amgen, Inc. v.
Chugai Pharmaceutical Co., 927 F.2d. 1200, 1212-14, 18 USPQ2d 1016, 1026-28
(Fed. Cir.), cert. denied, 502 U.S. 856, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991); In re
Vaeck, 947 F.2d at 496, 20 USPQ2d at 1445. Enablement is lacking in those cases,
the court has explained, because the undescribed embodiments cannot be made, based
on the disclosure in the specification, without undue experimentation. But the
question of undue experimentation is a matter of degree. The fact that some
experimentation is necessary does not preclude enablement; what is required is that
the amount of experimentation must not be unduly extensive. Atlas Powder Co., v.
E.I. DuPont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir.
1984). The Patent and Trademark Office Board of Appeals summarized the point well
when it stated:
The test is not merely quantitative, since a considerable amount of
experimentation is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should proceed to
enable the determination of how to practice a desired embodiment of the
invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
Appeal No. 95-1256
Application No. 08/043,917
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The specification provides adequate guidance to the technician of ordinary skill to
practice the embodiments covered by the claims. Through routine experimentation, one
can determine the hydrogenolysis conditions, among all those encompassed by the claims,
which, when applied to one of the claimed iodo starting materials, would obtain the
corresponding hydrofluro compound product.
Obviousness
All the pending claims are rejected over Haszeldine.
Claim 1, the sole independent claim, teaches “reacting an iodide compound . . . with
hydrogen at . . . about 4000C or less in the absence of metal-based hydrogenation
catalysts.” Appellants (brief, p. 9) admit that they “have not distinguished the Claim 1
process from the Haszeldine process on the basis of reactants” and since Haszeldine
teaches (pp. 3763 and 3766) reacting fluoro-iodide compounds with hydrogen at 3500C,
the prima facie case of obviousness depends on whether Haszeldine suggests conducting
the reaction in the absence of metal-based hydrogenation catalysts.
According to the examiner (examiner’s answer, paper no. 10, p. 7, lines 5-6),
“Haszeldine discloses a process wherein no catalyst is disclosed (page 3763)”. The
passage in question reads:
The fully fluorinated iodoalkanes are converted into the corresponding 1H-compounds
by reaction with alcoholic potassium hydroxide at ca. 1000 (cf. Banus, Emeleus, and
Haszeldine, J., 1951, 60), or with hydrogen at 3500.
Appellants (brief, p. 9) argue that “the present claims which recite the absence of metal-
Appeal No. 95-1256
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based hydrogenation catalysts, are clearly distinguished from the Haszeldine reactions
discussed at page 3766 which use a Raney nickel catalyst.” That passage reads:
Replacement of Iodine in fully Fluorinated Iodoalkanes by Hydrogen, Chlorine,
Bromine, or Fluorine. – (a) By hydrogen. Alcoholic potassium hydroxide (400% of 10%)
was heated with the fluoro-iodide (3 g.) at 100-1300 for 10 hr. to give the corresponding
1H-fluorocarbons shown in the Table:… The compounds C3F7H, C4F9H, and C5F11H were
also obtained (>80%) by reaction of the corresponding fluoro-iodides with hydrogen (60
atm.) at 3500 in the presence of Raney nickel catalyst. . . .
Resolving whether Haszeldine discloses using a catalyst or not will determine if a
prima facie case of obviousness has been established. To that end we are mindful that
The ever present question in cases within the ambit of 35 U.S.C. 103 is whether
the subject matter as a whole would have been obvious to one of ordinary skill in
the art following the teachings of the prior art at the time the invention was made.
It is impermissible within the framework of section 103 to pick and choose from
any one reference only so much of it as will support a given position, to the
exclusion of other parts necessary to the full appreciation of what such reference
fairly suggests to one of ordinary skill in the art. In re Wesslau, 353 F.2d 238,
241, 147 USPQ 391, 393 (CCPA 1965)

To meet the examiner’s burden of establishing a prima facie case, the examiner
relies on a passage disclosing a reaction “with hydrogen at 3500C” (Haszeldine, p. 3763).
This is relied on to the exclusion of a later more explicit instruction to conduct the
reaction with “hydrogen (60 atm.) at 3500C in presence of Raney nickel catalyst”
(Haszeldine, p. 3766). Examiner ignores the fact that the latter passage is included within
a section called “EXPERIMENTAL” (p. 3764) and, as the smaller print suggests,
explains in further detail what the earlier disclosure summarizes. It is clear that, after
reading Haszeldine in its entirety, the earlier passage is an abridged version of the only
method Haszeldine contemplates - one which uses a Raney nickel catalyst.
Appeal No. 95-1256
Application No. 08/043,917
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Even if the latter passage did not further describe the process, the earlier
disclosure alone could not support a prima facie case of obviousness. “To establish a
prima facie case of obviousness based on a combination of the content of various
references, there must be some teaching, suggestion or motivation in the prior art to make
the specific combination that was made by the applicant”. In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). The aforementioned earlier passage is
directed to a reaction “with hydrogen at 3500C”. A specific step of conducting the
reaction in the absence of a catalyst is missing. To support a prima facie case of
obviousness against appellants’ noncatalyst process, first, examiner would have to fill the
missing disclosure by showing that hydrogenation reactions can be successfully practiced
without a metal catalyst and, second, provide some motivation for doing so when
conducting Haszeldine’s hydrofluoro compound-producing process. Examiner’s rejection
relies wholly on Haszeldine without explaining why one of ordinary skill in the art would
have been motivated to conduct the reaction as claimed.
For the stated reasons, a prima facie case has not been established and therefore
the rejection involving Haszeldine is reversed.
Other Issue
We advise the examiner to consider the following issue and to take appropriate
action. Examiner should consider whether the question of an interference between this
appli-cation (filed April 7, 1993) and US Patent No. 5,648,568 (Ohura, filed June 5,
Appeal No. 95-1256
Application No. 08/043,917
3 Note the discussion in Oharu (col. 4, lines 4-56) on conducting the reaction in the
absence of a catalyst. The catalyst, which can be selected from “conventional
hydrogenation catalysts”, is employed as a means of increasing the efficiency of the
reaction. However, when considering other factors, such as the complexity of the
structure of the reactor or post treatment of the waste catalyst, it may be preferable not to
use a catalyst. This is the type of evidence which, if it had been available in the prior art,
would have strengthened examiner’s prima facie case of obviousness over Haszeldine.
9
1995) arises since this application and Ohura appear to be claiming the same patentable
subject matter. We make the following observations:
With respect to this application, when for example
R’=RfCF2X
Rf=CF2 (see spec., p. 3, lines 30-32)
X=F
R=RfCF2Y
Y=F
Z=F
the reaction of claim 1 of this application [i.e., R’CFZI + H2 = RCFZH] reads
on the following reaction: C3F7I + H2 = C3F7H, at 4000C or less in the absence
of a catalyst.
With respect to Oharu3, the representative claims read:
A method for producing a hydrofluorocarbon of the formula HnRfH
wherein n is 0 or 1, and when n is 0, Rf is a C2-12 linear or branched
polyfluoroalkyl group, and when n is 1, Rf is a C2-12 linear or branched
polyfluoroalkylene group, which comprises reacting an iodofluorocarbon
of the formula InRfI wherein n and Rf are as defined above, with hydrogen
at a temperature of not higher than 4500C. in a gas phase.
The method according to claim 1, wherein the reaction is carried out in the
absence of a catalyst.

When, for example,
Appeal No. 95-1256
Application No. 08/043,917
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n=0
Rf=C3F7 (see e.g., col. 2, line 4),
Ohura (claim 14) reads on, for example, the following reaction: C3F7I + H2 =
C3F7H, at not higher than 4500C in the absence of a catalyst.
For the reasons stated, we reverse the rejections under 35 U.S.C. § 112, first
paragraph, and § 103, and
Appeal No. 95-1256
Application No. 08/043,917
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remand to give the examiner an opportunity to consider the issue raised above.
REVERSED AND REMANDED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HUBERT C. LORIN )
Administrative Patent Judge )
HCL/dal
Appeal No. 95-1256
Application No. 08/043,917
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DAVID E. HEISER
LEGAL – PATENTS
E.I. DU PONT
NEMOURS and COMPANY
WILMINGTON, DE 19898