Appeal No. 94-4487
Application No. 08/006,021
dilute solution. Also, it is evident from the original
specification that the composition disclosed at page 3, lines
30-34, may also comprise an acid and an oxidant.
The examiner has also found that the appealed claims are not
enabled by the specification insofar as the claims encompass a
ferric salt of any anion, whereas the specification exemplifies
only three specific anions and the prior art discloses that metal
salts other than nitrates are ineffective. However, as pointed
out by appellant, the present specification teaches that six
specific ferric salts are effective, and it is our view that one
of ordinary skill in the art would not have to resort to undue
experimentation to determine which, if any, ferric salts are
ineffective. It must be borne in mind that it is not the
function of the claims to specifically exclude possible
inoperable substances. In re Dinh-Nguyen, 492 F.2d 856, 858-59,
181 USPQ 46, 48 (CCPA 1974); In re Anderson, 471 F.2d 1237, 1242,
176 USPQ 331, 334-35 (CCPA 1973).
We now turn to the examiner's rejection under 35 U.S.C.
§ 103. We fully concur with the examiner that the disclosures of
Law, Miller I, Miller II and Petigara evidence the prima facie
obviousness of stabilizing a dilute solution of CMI by
incorporating a water soluble, non-chelated ferric salt. Law
teaches the use of water soluble ferric salts to stabilize dilute
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