Appeal No. 1998-2273
Application 08/504,679
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-
70 (CCPA 1971). It is further well settled that “[a]n inventor need not . . . explain every detail
[of the invention] since he is speaking to those skilled in the art. What is conventional
knowledge will be read into the disclosure. Accordingly, an applicant’s duty to tell all that is
necessary to make or use varies greatly depending upon the art to which the invention pertains.”
In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981).
We interpret claims 1 and 13 in light of appellant’s specification as it would be
interpreted by one of ordinary skill in this art, see generally, In re Morris, 127 F.3d 1048, 1054-
55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), to encompass methods of inhibiting corrosion of
metallic surfaces with a tobacco residue extracted from “tobacco,” which term include leaves and
other plant parts, by subjecting the tobacco to basic media or steam environment. These claims
thus cover the application to a metallic surface of any residue extracted from tobacco by a
solution of even slightly basic media, which includes water, or by steam. We find that it would
be apparent to one skilled in the art that almost any substance covering a metallic surface would
provide at least temporary immunity by delaying onset of corrosion, and thus is a Type IIA
corrosion inhibitor, and therefore, it would not be necessary for appellant to describe to this
person the exact nature of the extracted tobacco residue. Indeed, according to the written
description in appellant’s disclosure, any extracted tobacco residue would provide at least this
type of corrosion inhibition.
Accordingly, the examiner has the burden of providing a reasonable explanation,
supported by the record as a whole, why the objective enablement set forth in the specification
would not have enabled one of ordinary skill in this art to practice the claimed invention without
undue experimentation. We have carefully considered the examiner’s explanation based on the
analysis “factors” set forth in Wands, supra, citing Ex parte Forman, 230 USPQ 546, 547 (Bd.
Pat. App. & Int. 1986), which appears in the record for the first time in the answer (pages 5-7),
apparently because of appellant’s arguments in the brief (pages 2-6) demonstrate that the
examiner had not previously carried the burden of establishing a prima facie case of
- 3 -
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007