Ex Parte Manzer et al

Board of Patent Appeals and Interferences

Jan 30, 2004

08460023 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEO E. MANZER, V. N. MALLIKARJUNA RAO
and
STEVEN H. SWEARINGEN
____________
Appeal No. 1997-1821
Application No. 08/460,023
____________
ON BRIEF
____________
Before OWENS, WALTZ, and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 7, 10 and 13 through 20, which
are all of the claims remaining in this application (see the Brief,
page 2). In the Answer, the examiner states that claims 13-15, 19
and 20 are allowed while claims 2 and 10 are objected to as being
dependent on a rejected base claim, but these claims would be
allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims (Answer,
Appeal No. 1997-1821
Application No. 08/460,023
2
page 1). Accordingly, claims 1, 3-7 and 16-18 remain on appeal
(id.). We have jurisdiction pursuant to 35 U.S.C. § 134.
According to appellants, the invention is directed to
reducing the fluorine content of an acyclic saturated compound of
a specified formula, where this compound is reacted with HCl in
the vapor phase at an elevated temperature in the presence of a
catalyst, with the mole ratio of HCl to the acyclic saturated
compound being at least about 1:1 (Brief, page 3). Illustrative
independent claim 1 is reproduced below:
1. A method for reducing the fluorine content of an acyclic
saturated compound selected from the group consisting of CHC12F,
CHClF2, CHF3, CHClFCF3, CHCl2CF3 and CHF2CH3, comprising the step of:
reacting said acyclic saturated compound with HCl in the vapor
phase at a temperature within the range of from about 250
C to
450
C in the presence of a catalyst, the mole ratio of HCl to said
acyclic saturated compound being at least about 1:1.
The examiner has relied upon Elsheikh et al. (Elsheikh), U.S.
Patent No. 5,177,271, issued Jan. 5, 1993, as the sole evidence
of obviousness. Thus the claims on appeal stand rejected under
35 U.S.C. § 103 as unpatentable over Elsheikh (Answer, page 3).
We reverse this rejection for the reasons set forth below.
Appeal No. 1997-1821
Application No. 08/460,023
3
OPINION
The examiner finds that Elsheikh discloses and claims a
process where 1,1,1-trifluoroethane is reacted with HCl at a
temperature of from 300-700°C. in the presence of a catalyst using
an HCl to trifluoroethane mole ratio of from 2:1 to 4:1 to produce
vinylidene fluoride (Answer, page 3). The examiner finds that
the process of Elsheikh reduces the fluorine content of 1,1,1-
trifluoroethane (from 3 to 2 fluorine atoms) utilizing conditions
which overlap those recited in the claims on appeal (Answer, page
4).
The examiner recognizes that the starting materials
(the acyclic saturated compounds) required by claim 1
on appeal differ from the starting material of Elsheikh
(1,1,1-trifluoroethane)(Answer, page 4). The examiner further
finds that it is well known in the art that dehydrofluorination
of halogenated ethane derivatives is applicable to “a wide range
of ethane derivatives.” Answer, page 5. The examiner also finds
that the starting materials of the claims on appeal are “well known
commercially available compounds” and the corresponding unsaturated
products produced by the Elsheikh process are “well known useful
compounds,” thus motivating one of ordinary skill in this art with
Appeal No. 1997-1821
Application No. 08/460,023
4
the “reasonable expectation” of obtaining vinyl fluoride or a
derivative (Answer, pages 5-6). We disagree.
The examiner recognizes that Elsheikh is limited to a single
starting material, namely 1,1,1-trifluoroethane (Answer, pages 3-
4). The examiner also recognizes that the specific starting
materials required by claim 1 on appeal differ from this starting
material of Elsheikh (Answer, page 4). The examiner does not find
that the starting materials of Elsheikh are structurally similar
to those recited in the claims on appeal but only finds that these
starting materials are “analogous” (id.). We determine that the
examiner has failed to show any motivation one of ordinary skill
in the art would have possessed to use the starting materials of
the claims on appeal in the Elsheikh process, nor has the examiner
established that one of ordinary skill in this art would have had a
reasonable expectation of success in using the starting materials
of the claims in the Elsheikh process. See In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Elsheikh specifically teaches that the “presence of HCl in
the process of this invention makes the result unpredictable.”
See col. 1, ll. 31-32. Elsheikh discloses that using an HCl
reactant readily forms chlorine gas by oxidation in air,
Appeal No. 1997-1821
Application No. 08/460,023
5
and the subsequent chlorine gas can chlorinate the methyl group of
1,1,1-trifluoroethane to form 1,1,1-trifluoro-2-chloroethane (col.
1, ll. 32-41). Accordingly, we determine that the examiner has
not shown any evidence of a reasonable expectation of success
when using HCl as a reactant with the acyclic saturated compounds
recited in claim 1 on appeal, all of which have at least
one hydrogen atom which could be replaced by chlorine.
Furthermore, the examiner has not submitted any evidence that
dehydrofluorination is applicable to a “wide range of ethane
derivatives” (Answer, page 5), much less the specific halogenated
ethane derivatives required by claim 1 on appeal.
Additionally, the examiner has failed to establish any
convincing motivation for one of ordinary skill in this art to
employ the halogenated ethane derivatives of claim 1 on appeal as
the starting materials in the process of Elsheikh. Even assuming
arguendo that the starting materials of the claims on appeal are
“well known commercially available compounds,” the examiner has
failed to establish the desirability of using the presently
claimed starting materials to produce the corresponding unsaturated
products of the Elsheikh process. See In re Brouwer, 77 F.3d 422,
425-26, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai,
71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995); and
Appeal No. 1997-1821
Application No. 08/460,023
6
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)(substitution of similar reactants does not make the process
obvious “unless the prior art suggested the desirability of [such]
a modification”).
For the foregoing reasons, we determine that the examiner has
failed to establish a prima facie case of obviousness in view of
the reference evidence. Accordingly, the rejection of claims 1,
3-7 and 16-18 under 35 U.S.C. § 103 over Elsheikh cannot be
sustained.
Appeal No. 1997-1821
Application No. 08/460,023
7
The decision of the examiner is reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
TAW/jrg
Appeal No. 1997-1821
Application No. 08/460,023
8
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