Appeal No. 1999-2548
Application No. 08/648,236
support for the claimed subject matter directed to bismuth and
manganese as passivating agents. On the other hand, we find
persuasive merit in the appellants’ argument that their
original disclosure including the first full paragraph in
column 3 of their patent would reasonably convey to an artisan
that they had possession on their application filing date of
passivating agents generally including the here claimed
bismuth and manganese passivating agents specifically. It
follows that we cannot sustain the examiner’s section 112,
first paragraph, rejection of claims 13 through 15, 21 through
27, 35 through 39, 41 through 45 and 50 through 55.
With regard to the section 103 rejection based upon
Suggitt as a primary reference, it is the examiner’s basic
position that, while “the Suggitt process includes a metals
removal step [,]
. . . it is well within the level of ordinary skill to omit a
known step in a process if the function of that step is not
desired” (answer, page 15). In further support of this
position, the examiner urges that “the chlorination step [of
Suggitt] is specific to vanadium removal [, and] [i]f the
removal of vanadium is not desired or not required, then one
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007