Appeal No. 1997-3892
Application 08/421,379
in amounts sufficient to inhibit the growth of biological fouling in the irrigation system,2 wherein the active
zinc can be provided by zinc sulfate or an active zinc chelated with 1-hydroxy ethane 1,1-diphosphonic
acid (HEDPA).
We have carefully considered the combined teachings of Geiger and Alexander in light of the
positions advanced by the examiner and appellants, and find that we cannot sustain the ground of
rejection based on this combination of references per se. We find that one of ordinary skill in this art
would have drawn from the combined teachings the suggestion that the methods of treating aqueous
systems wherein zinc precipitation is a problem, including cooling water systems, that involve corrosion
inhibition using a composition taught by Geiger would also destroy any bacteria in the system because of
the presence of zinc salts as shown by Alexander. We further find, however, that one of ordinary skill in
the art would not have found in this combination of references any suggestion at all that such aqueous
systems include irrigation systems. Thus, as a basic consideration, neither of the references taken
singularly or as applied by the examiner, teaches or suggests an irrigation system as specified in the
appealed claims, such that it is inescapable that the references as combined by the examiner, taken as a
whole, would not have resulted in the claimed method. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
We enter the following new ground of rejection of claims 1 through 4 and 9 through 12 under
37 CFR § 1.196(b) (1997). We find that appellants acknowledge in their specification that biological
fouling of irrigation systems and inhibiting such condition by flushing these systems with an excess of
chlorine was known in the art before the claimed invention was made, and that such biological fouling
would include bacterial growth (page 1, lines 12-30, and page 3, lines 36-37). It is well settled that
“[t]he significance of evidence that a problem was known in the prior art is, of course, that knowledge
of a problem provides a reason or motivation for workers in the art to apply their skill to its solution.”
2 See generally, Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555,
35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising -
meaning containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210
USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is propylene, any
other monomer may be present, because the term ‘comprises’ permits the inclusion of other steps,
elements, or materials.”)
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