Appeal No. 1997-3892
Application 08/421,379
beneficial use of a zinc compound by itself” (id., pages 7-8; reply brief, pages 2-3). However, we
remain in agreement with the examiner that one of ordinary skill in this art would have reasonably
recognized from this reference that one of the listed zinc salts can be used by itself, that is, without the
addition of base, to destroy bacteria in an aqueous system, as we find no express teaching or
reasonable inference that the addition of base is necessary to the destruction of bacteria by the zinc salt.5
On this basis, we must also agree with the examiner that these teachings of Alexander are reasonably
pertinent to the known problem of biological fouling of irrigation water which appellants address,
because this reference “logically would have commended itself to an inventor’s attention in considering”
this problem as the removal of the effects of bacteria in an aqueous system is an objective of Alexander.
In re Clay, 966 F.2d 656, 659-60, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992). We have carefully
considered the testimony of Appellant Iverson in his declaration and agree with the examiner that this
evidence establishes only that the practice of the invention with an admixture of “active zinc with
irrigation water” resulted in no “noticeable formation of precipitation or clogging of the pipes or nozzles
in the irrigation systems” (declaration, page 2; brief, page 14; answer, page 7), which evidence that the
claimed invention will function as disclosed in the specification does not amount to evidence that would
patentably distinguish the claimed invention from the combination of the known problem and the
pertinent teachings of Alexander.
Accordingly, having reconsidered the evidence of record in light of appellants’ arguments of
record as they pertain to the new ground of rejection which we have entered above, we remain of the
opinion that the claimed invention encompassed by appealed claims 1 through 4 and
5 See In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference would
be discouraged from following the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant. The degree of teaching away will of course depend on
the particular facts; in general, a reference will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.
[Citations omitted.]”).
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