Ex Parte Elsheikh et al

Board of Patent Appeals and Interferences

Jun 26, 2002

09312267 (B.P.A.I. Jun. 26, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MAHER Y. ELSHEIKH and BIN CHEN
____________
Appeal No. 2001-1105
Application No. 09/312,267
____________
ON BRIEF
____________
Before PAK, OWENS, and PAWLIKOWSKI, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 2-4, which
are all of the claims remaining in the application. In the
examiner’s answer (page 2) the examiner states that claim 3 is
objected to as being dependent upon a rejected claim, but would be
allowable if rewritten in independent form including all of the
limitations of the claim from which it depends. Hence, the claims
before us are claims 2 and 4.
Appeal No. 2001-1105
Application No. 09/312,267
1 Citations herein to Tatsuo are to the English translation
thereof which is of record.
2
THE INVENTION
The appellants’ claimed invention is directed toward a process
for making 1,1,1,3,3-pentafluoropropane. Claim 4 is illustrative:
4. A gas phase process for preparing readily recoverable
1,1,1,3,3-phentafluoropropane which comprises (a) contacting
1,1,1,-trifluoro-3-chloro-propene with hydrogen fluoride in the
presence of a supported antimony halide catalyst under conditions
sufficient to achieve at least about 95% conversion of said 1,1,1-
trifluoro-3-chloro-2-propene; and (b) recovering 1,1,1,3,3-
pentafluoropropane from the resulting reaction mixture.
THE REFERENCES
Boyce et al. (Boyce) 5,616,819 Apr. 1, 1997
Tatsuo et al. (Tatsuo)1 WO 97/24307 Jul. 10, 1997
(PCT application)
THE REJECTION
Claims 2 and 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Boyce in view of Tatsuo.
OPINION
We reverse the aforementioned rejection. We need to address
only claim 4, which is the sole independent claim.
Appeal No. 2001-1105
Application No. 09/312,267
3
Boyce discloses a liquid phase process for converting a
chlorofluoro olefin to a fluorinated aliphatic hydrocarbon (col. 1,
lines 66-67; col. 3, lines 31-36). In Example 1b(ii), 1-chloro-
3,3,3-trifluoropropene is converted to 1,1,1,3,3-pentafluoropropane
by reaction with hydrogen fluoride in the presence of an
unsupported SbCl5/TiCl4 catalyst. In this example Boyce states
that “[a]n average of 131 g (95%) of 1,1,1,3,3-pentafluoropropane
was isolated for each of 2 consecutive runs” (col. 7, lines 6-7).
The examiner argues that “Boyce et al disclose every
limitation of the instantly claimed process except for the
requirement for a catalyst support” (answer, page 4). The
examiner, however, does not point out where Boyce discloses that
the conversion of the chlorofluoro olefin to the fluorinated
aliphatic hydrocarbon can take place in the gas phase. Boyce
teaches that the first step of his process, wherein a chlorofluoro
olefin is made from a chlorinated olefinic hydrocarbon, can be
carried out in either the liquid phase or the gas phase (col. 3,
lines 13-16). The conversion of the chlorofluoro olefin to a
fluorinated aliphatic hydrocarbon, which is the reaction in example
1b(ii), is disclosed as being carried out in the liquid phase (col.
3, lines 33-36).
Appeal No. 2001-1105
Application No. 09/312,267
4
As for the requirement in the appellants’ claim 4 of a
supported antimony halide catalyst, the examiner argues that
“Tatsuo discloses a process including reacting 1,1,1-trifluoro-3-
chloro-2-propene with hydrogen fluoride to produce 1,1,1,3,3-
pentafluoropropane (page 10 of the translation) in the presence of
supported catalysts including antimony (page 11 of the
translation)” (answer, page 5). However, we do not find on page 11
or elsewhere in the translation a disclosure of a supported
antimony catalyst. Tatsuo teaches that the catalyst can be “a
carried catalyst obtained by carrying at least 1 element selected
from Cr, Zn, Ti, V, Zr, Mo, Ge, Sn and Pb on fluorinated alumina”
(page 11). None of these elements is antimony (Sb).
For the above reasons, we find that the examiner has not set
forth a factual basis which is sufficient to support a conclusion
of prima facie obviousness of the process recited in the
appellants’ claim 4. Accordingly, we reverse the rejection of this
claim and claim 2 which depends therefrom.
Appeal No. 2001-1105
Application No. 09/312,267
5
DECISION
The rejection of claims 2 and 4 under 35 U.S.C. § 103 over
Boyce in view of Tatsuo is reversed.
REVERSED
)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
TJO/ki
Appeal No. 2001-1105
Application No. 09/312,267
6

William D. Mitchell
Elf Atochem North America Inc.
Patent Department
2000 Market Street
Philadelphia, PA 19103-3222