Appeal No. 1996-4171
Application 07/762,298
untreated and treated streams are not seen to materially
affect the overall results of the recited process, or to
produce any new and unexpected results; and are therefore
deemed to be obvious matters of choice” (examiner’s answer,
pages 3-4). In effect, in his stated rejection, the examiner
erroneously read the claimed concentration limitation of “less
than 1 ppm” out of the claims. However, every limitation in a
claim must be considered in resolving the obviousness of a
claimed invention as a whole within the meaning of 35 U.S.C. §
103. See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1439-40 (Fed. Cir. 1988)(a structure
created from the combined teachings of the prior art
references “would, in any event, fall short of the invention”
defined by the claims).
In his brief at pages 5 and 6, appellant presents
detailed arguments explaining why the experimental data
presented in Figure 2 of Eccles demonstrates that the Eccles
process is not viable for removing heavy metals from a waste
stream to sub-ppm levels. Accordingly, while appellant
implicitly concedes that there may be a suggestion for using
an amino-phosphonic resin material for removing thorium ions
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007