Appeal No. 1996-2943
Application No. 08/229,648
Concerning the rejection over Bowing in view of Oakes,
the appellants reiterate their argument that it is
inappropriate to consider a method to be inherently practiced
by the prior art. This argument is not well taken. It is
well settled that a method may be inherently practiced by the
prior art and that reliance upon inherency is not improper
even though a rejection is based on 35 U.S.C. § 103 instead of
§ 102. In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82-83
(CCPA 1975).
Additionally, the appellants argue that the rejection
over Bowing in view of Oakes is improper because “[n]either
reference disclose [sic] destaining or bleaching” (request,
page 9). We remain convinced, however, that the applied1
references would have suggested a method of cleaning ware
1By way of clarification, the argued claims on appeal do
not recite a “bleaching” function. Furthermore, the
“destaining” recitation of these claims does not necessarily
require a “bleaching” function. This is because the
definition of “destaining” includes the removal of soil or
foreign matter which is expressly taught by the applied
references. Finally, notwithstanding the appellants’ opposing
viewpoint, we continue to consider it reasonable to conclude
that an ordinarily skilled artisan would have recognized the
hydrogen peroxide of the applied reference compositions as a
bleach and thus would have expected these compositions to
perform a bleaching function. This last mentioned issue
should be explored in any further prosecution that may occur.
2
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