Ex Parte Miecznik - Page 2

                Appeal 2006-2667                                                                              
                Application 10/257,952                                                                        
                is treated such that the molar distribution of the hardening constituents in the              
                liquid is influenced such that a proportion of magnesium and/or magnesium                     
                compounds is increased at the expense of the proportion of the other                          
                hardening constituents.  Further details of this method are set forth in                      
                representative claims 1 and 11 which read as follows:                                         
                      1.  A method for inhibiting scale formation and/or corrosion in                         
                systems conveying or in contact with liquids, whereby the liquid has a                        
                hardness and is treated such that the molar distribution of the hardening                     
                constituents in the liquid to be treated is influenced such that a proportion of              
                magnesium and/or magnesium compounds is increased at the expense of the                       
                proportion of the other hardening constituents, wherein only a partial flow of                
                the liquid is treated and then the treated partial flow is mixed with an                      
                untreated main flow.                                                                          

                      11.  The method as claimed in Claim 1, wherein the hardness of the                      
                liquid is not changed.                                                                        

                      The references set forth below are relied upon by the Examiner has                      
                evidence of obviousness:                                                                      
                Hann     US 5,277,823  Jan. 11, 1994                                                          
                Mackintosh    US 5,993,737  Nov. 30, 1999                                                     
                      Claim 11 stands rejected under the first paragraph of 35 U.S.C. § 112                   
                as failing to comply with the written description requirement.  According to                  
                the Examiner, the claim 11 limitation "the hardness of the liquid is not                      
                changed" lacks clear antecedent basis in the Specification as originally filed                
                and is drawn to new matter (Answer 3).                                                        
                      Claims 1-4, 6, and 11-13 stand rejected under 35 U.S.C. § 103(a) as                     
                being unpatentable over Mackintosh.  In the paragraph bridging pages 3-4 of                   
                the Answer, the Examiner describes his position as follows:                                   


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