Appeal No. 1996-2239 Page 7
Application No. 08/037,485
established a prima facie case of obviousness over the claimed
subject matter.
As to appellants’ argument that there is no disclosure
that the amino carboxylates are corrosion inhibitors, it is our
conclusion that although the claimed subject matter requires
their presence, it is silent as to their function. Therefore,
the teaching of their presence by the references of record is
sufficient to meet the requirements of the claimed subject
matter.
With respect to claims 5 and 19, we find that Stephen
discloses amino carboxylates wherein R and R are alkyl having1 2
1 to 18 carbon atoms. See column 2, lines 3-4. We conclude that
it would have been obvious to one of ordinary skill in the art
to have chosen particular alkyl groups from among those
disclosed by Stephen.
The Rejection of claims 6 through 14 and 20 through 28
“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case of unpatentability.” See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
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