Ex parte KOWALSKI et al. - Page 6




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


          corrosion and scale inhibitors and biocides are conventional                
          materials contemplated by Mosier’s reference to a ?wide                     
          variety? of oil field chemicals.                                            
               Based on the foregoing, we affirm the examiner’s                       
          rejection of appealed claims 1-3, 5-9, and 11-24 for                        
          obviousness (35 USC                                                         
          § 103).  Dependent appealed claim 10 stands on a different                  
          footing, however, since this claim requires specific chelating              
          agents not taught by any of the relied upon references.  Thus               
          the examiner has failed to establish a prima facie case for                 
          the subject matter of dependent claim 10, and we therefore                  
          reverse the rejection of this claim.                                        
               We also reverse the examiner’s alternative rejection                   
          under 35 USC § 103 over Mosier in view of Jacobs.                           
               The examiner relies on Jacobs for its teaching that the                
          chelates of the instant claims are well known commercial iron               
          sequestrants ?in the industry?.  In this regard, the examiner               
          appears to be relying on the specific disclosure of Jacobs at               
          column 2, lines 30 through 34 which refers to the most common               
          iron sequestering agents ?in commercial practice?.  However,                
          with respect to the use as acidizing solutions, the object of               
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