Ex parte KOWALSKI et al. - Page 5




          Appeal No. 95-0562                                                          
          Application 07/878,940                                                      


          Thus appellants contend that the Hen process is incompatible                
          with the slow dissolving characteristics of the presently                   
          claimed microcapsules.  Like the examiner, we see no                        
          inconsistency in the two operations.  As the examiner points                
          out, Hen envisions the scale removing process as one in which               
          the composition is allowed to remain in place for significant               
          periods of time at high temperature downhole locations.                     
          Specifically see Hen at column 4, lines 19 through 24.                      
          Accordingly, under these circumstances, a slow release                      
          microcapsule mechanism as disclosed by Mosier would be a                    
          desirable option.                                                           
               Appellants specifically argue that appealed claims 23 and              
          24, which refer to a treatment for at least about one month,                
          involve a process which resolves a specific problem and thus                
          are separately patentable.  See the Brief at page 4.  However,              
          Mosier indicates that a corrosion inhibitor in the prior art                
          capsules may be introduced at a desired level for from 60 to                
          90 days.  See Mosier at column 6, lines 68 through 73.  Thus                
          we agree with the examiner that process claims 23 and 24 do                 
          not define unobvious subject matter.  To the extent that                    
          dependent claims 14, 16, 19, and 22 are argued, we note that                
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