Appeal No. 1997-3892
Application 08/421,379
9 through 12 are prima facie obvious over the combination of the known problem and the pertinent
teachings of Alexander. Thus, the burden of going forward with respect to this ground of rejection
remains with appellants. See Piasecki, supra.
We have not extended the new ground of rejection to include appealed claims 5 through 8
because there is no evidence or explanation in the record which pertains to an active zinc chelated with
1-hydroxy ethane 1,1-diphosphonic acid (HEDPA) that is specified in claim 5, on which claims 6
through 8 directly or ultimately depend. We fail to find in the examiner’s answer any response to
appellants’ contentions that Geiger discloses “a water soluble zinc compound and HEDPA . . . only for
the purpose of treating cooling water” (brief, pages 12-13). We do find that zinc chelated with HEDPA
is not among the “water-soluble zinc compounds” listed at page 5 of this reference, which further
discloses at page 6 that organic phosphonates, such as HEDPA, are used to form orthophosphate in
situ. Thus, we find no evidence which establishes that one of ordinary skill in this art would have
recognized that zinc chelated with HEDPA is useful in the process of Alexander even in view of the
disclosure in this reference that “[o]rganic zinc salts may also be used” (col. 2, lines 1-2 and 5).
Accordingly, we find no evidence in the record which would support a prima facie case of obviousness
with respect to the claimed method encompassed by appealed claims 5 through 8.
The examiner’s decision is reversed.
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b)(amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
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