Ex parte ROBERTSON et al. - Page 2




              Appeal No. 1996-4170                                                                                             
              Application 08/413,657                                                                                           


              5-10.  Subsequently, claim 8 was canceled leaving claims 1, 5-7, 9 and 10 for our                                
              consideration.                                                                                                   
                      Claim 1 is representative of the subject matter on appeal and reads as follows:                          
                      1.  A process for inhibiting the adhesion of bacterial cells to solids surfaces and                      
              controlling biological fouling in a paper machine aqueous system which comprises adding                          
              to the aqueous system from about 0.01 to about 45 parts per million, based on the weight                         
              of the aqueous liquid in the system of a vinyl cationic polymer selected from the group                          
              consisting of poly(diallyldimethylammonium chloride),                                                            
                      poly(dimethylaminoethylacrylate methylchloride quat),                                                    
                      poly(dimethylaminoethylymethacrylate [sic] methylchloride quat),                                         
                      poly(acrylamido-N-propyltrimethylammonium chloride) and                                                  
                      poly(methacrylamido-N-propyltrimethylammonium chloride).                                                 

                      The references relied upon by the examiner are:                                                          
              Shair et al. (Shair)                         4,111,679                     Sept.  5, 1978                        
              Finck et al. (Finck)                         5,246,547                     Sept. 21, 1993                        
                      Claims 1, 5-7, 9 and 10 stand rejected under 35 U.S.C. § 103.  As evidence                               
              of obviousness the examiner relies upon Finck and Shair.   We reverse.                                           
                                                       DISCUSSION                                                              
                      Claim 1 requires the addition of a specified polymer to a paper machine aqueous                          
              system in an amount from about 0.01 to about 45 ppm, based on the weight of the                                  
              aqueous liquid in the system.  The purpose for doing so is specified in claim 1, viz, to                         


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