Ex parte RAO

Board of Patent Appeals and Interferences

Jun 18, 1998

08042200 (B.P.A.I. Jun. 18, 1998)

Application for patent filed April 2, 1993.1
1
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law journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte V. N. MALLIKARJUNA RAO
_____________
Appeal No. 95-0798
Application 08/042,2001
______________
ON BRIEF
_______________
Before KIMLIN, GARRIS and WEIFFENBACH, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of
claims 1-12 under the first paragraph of 35 U.S.C. § 112, the sole ground of rejection. In the final
rejection, the examiner indicated that claims 13 and 14 would be allowable if amended in independent
form. In an amendment after final action (paper no. 6), appellant rewrote claim 12 (from which
Appeal No. 95-0798
Application 08/042,200
2
claims 13 and 14 depend) in independent form. In an advisory action (paper no. 7), the examiner
indicated that the amendment would be entered upon filling an appeal and that upon entering the
amendment, claims 12-14 would be allowable. Accordingly, claims 1-11 are before us for
consideration. We reverse.
The Claimed Subject Matter
The claims on appeal are directed to a process for enriching the amount of CClF CClF2 2
relative to CClF CF using a vapor phase fluorination catalyst. The following claim is illustrative of2 3
the claimed subject matter:
1. A process for enriching the amount of CClF CClF relative to the amount2 2
of CCl FCF from an initial mixture containing CClF CClF and CCl FCF comprising2 3 2 2 2 3
the steps of:
contacting said initial mixture with hydrogen chloride in the vapor phase at an
elevated temperature in the presence of a vapor phase fluorination catalyst to produce
a product mixture containing C C1 F and chlorination products of CCl FCF wherein2 2 4 2 3
the weight ratio of CClF CClF to the total C C1 F is higher than the weight ratio of2 2 2 2 4
CClF CClF to the total C Cl F in the initial mixture; and separating chlor-inated2 2 2 2 4
products of CCl FCF in the product mixture from the C Cl F therein.2 3 2 2 4
Opinion
We have carefully considered the respective positions advanced by appellant and the examiner.
For the reasons set forth below, we will not sustain the examiner's rejection.
The examiner has rejected claims 1-11 under the first paragraph of 35 U.S.C. § 112 on the
ground that the disclosure is “enabling only for claims limited to the specifically disclosed catalysts
Appeal No. 95-0798
Application 08/042,200
3
in the instant specification” (answer: p. 3). The examiner’s theory for lack of enablement is as
follows:
The instant specification discloses that it is known in the art to enrich the amount of
the claimed desired isomer in the claimed isomer mixture (page 1, background) and
yet no prior art reference of record teaches the use of any hydrofluorination catalyst
to selectively react HCl with the undesired isomer for this purpose. It is clear,
therefore, that the use of a hydrofluorination catalyst to accomplish enriching the
amount of the desired isomer by hydrochlorination would have been unpredictable to
one of ordinary skill in the art.
It is this unpredictability which would result in the requirement for undue
experimentation to determine which of the virtually unlimited catalysts included by the
instant claims would cause selective reaction of one of the isomers in the reactive
mixture.
The problem of selection of a suitable catalyst is exacerbated by the claimed
requirement to use a “fluorination catalyst” to perform a hydrochlorination reaction.
In fact, claim 1 requires nothing more of the catalyst than that it be a “fluorination
catalyst”. It is incredible to urge that one of ordinary skill in the art would be able to
determine without undue experimentation which of the virtually limitless number of
“fluorination catalyst(s)” included by the claimed process would result in a selective
hydrochlorination reaction of one component of a mixture of reactive isomers from
the presentation of two examples in the specification. [Answer: pp. 3-4; emphasis in
the original.]
The determination of enablement is a question of law based on underlying factual findings.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder Co. V. E.I.
Du Pont De Nemours & Co., 750 F.2d 1569, 1513, 224 USPQ 409, 411 (Fed. Cir. 1984). In
determining whether a disclosure would require undue experimentation to make the claimed subject
matter, the examiner must consider the quantity of experimentation necessary, the amount of direction
or guidance presented, the presence or absence of working examples, the nature of the invention, the
state of the prior art, the relative skill of those in the art, and the predictability or unpredictability of
Appeal No. 95-0798
Application 08/042,200
4
the art. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404, (Fed. Cir. 1988), citing with
approval Ex parte Forman, 230 USPQ 526, 547 (Bd. Pat. App. & Int. 1986). The burden is on the
examiner to establish a reasonable basis to question the adequacy of appellant’s disclosure. In re
Marzocchi, 439 F.2d 220, 223-224, 169 USPQ 367, 370 (CCPA 1971). On the record before us,
we are not persuaded that the examiner has met this burden.
While catalytic processes can be unpredictable, the examiner’s broad assertion of
unpredictability based on the fact the number of fluorinated catalysts is virtually limitless, without
more, is not dispositive on the question of undue experimentation. The examiner has not explained
how the relative skill of those in the art would have found the claimed process to be unpredictable
so as to necessitate undue experimentation in view of the numerous “suitable” fluorinated catalysts
disclosed by appellant on page 4 of the specification. In addition, the examiner has not explained how
much experimentation is necessary and why extensive experimentation and the nature of the invention
would require undue experimentation. Furthermore, the examiner has not provided evidence and/or
presented scientific reasoning with reference to the state of the prior art which would have led a
person having ordinary skill in the art to question why all known fluorinated catalysts could not be
employed in the practice of the claimed process.
Appellant has presented two working examples in his specification. The first example uses
an alumina catalyst while the second example uses a fluorided alumina catalyst. The examiner has
not found these examples to be non-enabling. Appellant states that “fluorination catalysts” are known
in the art in processes involving the fluorination of fluorochloroethane compounds and cites Patent
Appeal No. 95-0798
Application 08/042,200
5
No. 5,243,105 to Scott issued September 7, 1993 as evidence to that fact (see col. 2, lines 24-42).
On page 4, lines 3-14 of the specification, appellant discloses numerous examples of what constitutes
a “fluorination catalyst.” According to appellant,
[c]atalysts which may be used in accordance with this invention include alumina;
fluorided alumina; aluminum fluoride; metals supported on alumina; metals supported
on aluminum fluoride; magnesium fluoride supported on aluminum fluoride; metals
supported on fluorided alumina; alumina on carbon; aluminum fluoride on carbon;
fluorided alumina on carbon; metals supported on carbon; chromium catalysts;
mixtures of metal halides, aluminum fluoride, and graphite; and chromium-magnesium
optionally supported on graphite. Suitable metals include chromium, Group VIII
metals (e.g., iron, cobalt and/or nickel), Group VIIB metals (e.g., manganese), Group
IIIB metals (e.g., lanthanum), and zinc.
Appellant further cites patents which teach how to make a fluorided alumina catalyst, a aluminum
fluoride catalyst, catalysts comprising metals on aluminum fluoride or fluorided alumina, chromium
catalysts such as mixtures of chromium and magnesium, and chromium on carbon. While appellant
has not specifically disclosed every known fluorinated catalyst which will work in the claimed
process, there is no such requirement contemplated under the statute. See In re Angstadt, 537 F.2d
498, 502-504, 190 USPQ 214, 218 (CCPA 1976). Accordingly, we find that appellant has presented
sufficient direction and guidance such that a person having ordinary skill in the art could practice the
invention without an undue amount of experimentation.
Most of the catalysts set forth on page 4 of the specification are recited in appealed claim 2
from which claims 3-6 depend while claim 11 encompasses only some of the listed catalysts. The
examiner asserts that the recitation of catalysts in claim 2 is unduly broad in that
... the recitation of “chromium catalysts” is virtually limitless including catalysts
Appeal No. 95-0798
Application 08/042,200
6
wherein the chromium may be present in minor amounts with any number of other
active components. Furthermore, the definition for “metal” is unduly broad in that it
would result in literally thousands of catalyst compositions. This is so in view of the
fact that recitations such as “metals on carbon” are not limited to single metal
compositions but include an unspecified number of metals from within the broad
groups recited.
It is noted that there are no specific catalysts listed in claim 2 except for cobalt
and the assumption that all known “fluorination catalyst(s)” would function in the
unpredictable manner required by the claimed process is incredible based upon this
limited disclosure.
The recitation “comprises aluminum fluoride” (claim 3) does not overcome
the deficiencies of the enablement in the specification in that the use of “comprises’
results in a claim which does not exclude the “metals supported on aluminum
fluoride” of claim 2 from which it depends and therefore is not supported by an
adequate enabling disclosure for the reasons described above for claim 2.
The catalyst used in the process of claim 11 is virtually identical in scope to
that used in the process of claim 2 and is deficient for the reasons given above for
claim 2. [Answer: p. 4-5; emphasis in the original.]
We cannot agree with the examiner. While the examiner correctly presumes that the recitation of
“fluorinated catalyst” in claim 1 which includes “chromium catalysts” and Groups IIIB, VIIB and
VIII metals on carbon, graphite, alumina, aluminum fluoride, and fluorided alumina supports must
be taken as an implied assertion by appellant that all members of this particular class of catalysts can
be employed in the claimed process, the breadth of “fluorinated catalyst”, “chromium catalysts”, or
“metals” should be of no concern to the examiner. It is the accuracy and truth of the implied
assertion which should be the only concern of the examiner. The requirement of 35 U.S.C. § 112,
first paragraph is nothing more than an objective enablement. On the record before us, the examiner
has not presented any scientific reasoning or evidence to create a reasonable doubt on the accuracy
and truth of the statements contained in the specification regarding the use of fluorination catalysts
Appeal No. 95-0798
Application 08/042,200
7
in the claimed process. In the absence of such reasons or evidence, appellant’s disclosure must be
taken as being in compliance with the enablement requirement of the first paragraph of 35 U.S.C. §
112. The burden is on the examiner to establish an adequate basis to question the adequacy of
appellant*s disclosure. In re Marzocchi, 435 F.2d at 223-224, 169 USPQ at 370. On this record,
the examiner has not met his burden.
For the foregoing reasons, we will not sustain the rejection. Accordingly, the examiner’s
decision rejecting claims 1-11 under 35 U.S.C. § 112, first paragraph, is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
Appeal No. 95-0798
Application 08/042,200
8
DAVID E. HEISER
LEGAL - PATENTS
E. I. DU PONT DE NEMOURS & CO.
WILMINGTON, DE 19898