Appeal No. 1996-4170
Application 08/413,657
that polymer to a papermaking process. Rather, the reference which is relied upon by the
examiner, Finck, describes the addition of copolymers which are not within the scope of
claim 1 on appeal to a papermaking process. Any modification of Finck
based upon its use of poly-DADMAC necessarily would be a modification of the laboratory
procedure used in performing the comparative examples. Such a modification would not
result in the subject matter of claim 1.
We again emphasize that the examiner is not relying upon prior art references
which actually teach or describe the addition of poly-DADMAC to a papermaking
2
process. Assuming for the sake of discussion that the amount of poly-DADMAC used as
a “conventional pitch control agent” does not fall within the amount required by claim 1 on
3
appeal, as is apparently the examiner’s assumption, we do not find that Shair provides the
needed suggestion to use poly-DADMAC in a “biocide amount.” As set forth above, Shair
does not teach that polyquaternary compounds in general are effective as biocides.
2If a reference exists that adds poly-DADMAC, or any of the other polymers listed
in claim 1 on appeal, to a paper machine aqueous system in the amount required by claim
1 on appeal for any purpose, that reference would anticipate claim 1. See In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“It is a general rule that
merely discovering and claiming a new benefit of an old process cannot render the
process again patentable.”).
3The examiner has not calculated the amount of poly-DADMAC used in Table 1 of
Finck on the basis required by claim 1 on appeal--ppm based on the weight of the
aqueous liquid. Note that Finck states at column 5, lines 8-10 that the consistency of the
pulp used in the examples was 1.4%.
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