Appeal No. 1996-2400
Application 08/245,145
sustain the ground of rejection of claim 16 under § 103 over Faircloth et al. (Office action of December
13, 1994 (Paper No. 7; pages 3-4); answer, pages 3-6). It is well settled that the examiner must
satisfy his burden of establishing a prima facie case of obviousness by showing some objective
teaching or suggestion in the applied prior art taken as a whole or that knowledge generally available to
one of ordinary skill in the art would have led that person to the claimed invention, including each and
every limitation of the claims, without recourse to the teachings in appellants' disclosure. See generally
In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring); In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988)
We construe claim 16 to specify a solution that comprises at least water as a solvent, an
organophosphorus scale inhibitor selected from the group consisting of nitrilotri(methylene phosphonic
acid), diethylenetriaminepenta(methylene phosphonic acid) and salts thereof with monovalent cations in
an unspecified amount, and sodium chloride in an amount of about 12 to about 14% by weight of the
scale inhibitor solution, and that can contain additional ingredients, such as the precursors of Faircloth et
al. and formation brine, in view of the transitional term “comprising.” Exxon Chemical Patents Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed
composition is defined as comprising - meaning containing at least - five specific ingredients.”); In re
Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the
monomers in the reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”). Thus, the composition as
claimed exists whenever the three specified ingredients are present, regardless of the presence of other
ingredients. See Exxon Chemical Patents, 64 F.3d at 1555-58, 35 USPQ2d at 1802-05
(“Consequently, as properly construed, Exxon’s claims are to a composition that contains the specified
ingredients at any time from the moment at which the ingredients are mixed together.”).
The examiner contends that one of ordinary skill in this art would have known that “the more
concentrated salt solutions would possess more dissolving ability with respect to dissolving the
formation” (answer, page 5). Thus, the examiner alleges that Faircloth et al. would have motivated that
person to employ a higher concentration of sodium chloride in the scale inhibitor solutions of the
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