Appeal No. 1998-2077
Application 08/553,324
have reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23
USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344
(CCPA 1968), presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ
771, 774 (Fed. Cir. 1985). The plain language of Lindberg pertinent here is the clear disclosures “[step]
(a) Treating digested pulp in an acidic or neutral stage to dissolve transition metals” (col. 2, lines 14-16)
and “[s]tep (a) may be an ozone stage, or a chelation stage (such as an EDTA stage, an acid only stage,
or a combination EDTA and acid stage)” (col. 2, lines 28-30), which language also appears in claims 1
and 10 of this United States Patent. Appellants have not established by scientific reasoning or evidence
that one of ordinary skill in the art armed with knowledge in the art would have clearly considered this
plain language in the specification of Lindberg to constitute error, that is, that this person would not have
recognized from the reference that “an ozone stage” is “an acid . . . stage” that dissolves the transition
metals in pulp, and thus would have reasonably considered Lindberg to be non-enabling in this respect.
The burden of proving non-enablement of such disclosure is not insubstantial as there is a strong
presumption of validity respecting the disclosure and claims of a United States Patent. See 35
U.S.C. § 282 (1995). Indeed, appellants’ mere contention that it is they who have discovered the
additional function of “an ozone stage” as dissolving metals from pulp clearly does not carry the burden.
Thus, on this record, Lindberg provides an enabling disclosure, placing the use of “an ozone stage” at the
beginning, or initial stage, of the bleaching sequence for the purpose of dissolving metals in pulp in the
possession of the public. See, e.g., In re Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA
1979).
I do agree with appellants that the Z stage and the Q stage do not function in the same manner
(brief, pages 11-13 and 16-18; reply brief, page 4), which is obvious from the reagents involved.
However, this is not to say that these stages do not achieve the same purpose of dissolving metals in the
pulp as taught in Lindberg. Furthermore, I cannot agree with appellants’ argument that “[t]here is no
basis for the [examiner’s argument] that a prima facie case is made for the use of ozone and chelation
stages in any order” from the disclosure of Lindberg, and thus the examiner is “relying on hindsight
gleaned from the present specification, and/or unfounded speculation” (id.). While I agree with
appellants that Lindberg discloses that “[s]tep (a) may be an ozone stage, or a chelating stage” (col. 2,
line 28; emphasis supplied), and does not specifically disclose the sequence ZQP as part of a bleaching
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