Ex parte KOWALSKI et al. - Page 3
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Board of Patent Appeals and Interferences > 1997 > Ex parte KOWALSKI et al. - Page 3
Appeal No. 95-0562
Application 07/878,940
important aspect of Mosier’s microcapsules is that they
contain a weighting agent such as barium sulfate which2
enables the control and positioning of the microcapsule as a
deposit at the bottom of a gas producing well (column 6, lines
53 through 62 and Figure 2). The examiner has accurately
characterized the claimed invention as an alleged improvement
over Mosier in that the claimed invention requires the
incorporation of a strong chelating agent in the microcapsule,
a feature not expressly described in Mosier.
Appellants argue that the combined teachings of the
relied upon references do not raise a prima facie case of
obviousness for the claimed subject matter. Thus appellants
contend that the solution to the problem of premature
microcapsule destruction via incorporation of strong chelating
agents into the microcapsule ?would not have been suggested by
any logic taught in any reference? (Brief, page 1). This
argument, however, overlooks the principle that the motivation
in the prior art to combine the references does not have to be
identical to that of an applicant to establish obviousness.
2Compare appealed dependent claim 3 and dependent claim 15 respectively.
3
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Last modified: November 3, 2007
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