Appeal No. 1996-0167
Application No. 08/082,107
acid and a minor proportion of hydrochloric acid" (column 2, lines 39-41), and
claim 1 of Schmerling recites "an acidic reagent containing a major proportion of an
organic acid." According to the examiner, Schmerling's major proportion of organic acid
"would overlap the instantly claimed less than 50 percent." (page 4 of answer). However,
while it can be argued that a major proportion of an organic acid can be literally interpreted
as some amount less than 50 percent, we find that this is an unreasonable interpretation
when the entirety of the Schmerling disclosure is considered as a whole. In our view, when
claim 1 of Schmerling is read in light of the specification, which clearly teaches and
exemplifies an aqueous treatment media containing at least 60 percent by weight of
organic acid, one of ordinary skill in the art would not understand that the treatment solution
may contain less than 50 percent by weight of organic acid. We note that EXAMPLE III of
Schmerling, which employs "a predominant proportion of glacial acetic acid and a minor
proportion of concentrated hydrochloric acid", uses "150 grams of glacial acetic acid and
5 grams of concentrated hydrochloric acid", which is considerably greater than 60 percent
of acetic acid. Consequently, we disagree with the examiner that Schmerling provides a
teaching of utilizing an aqueous treatment solution comprising less than 50 percent by
weight of organic acid.
Since we find that the applied prior art fails to establish a prima facie case of
obviousness, it is unnecessary to assess the probative value of the Poisson declaration.
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007