Appeal No. 1998-2273
Application 08/504,679
The appealed claims, as represented by claim 1, are drawn to a method of inhibiting
corrosion of metallic surfaces by extracting a residue from tobacco using a basic, that is, alkaline,
solution and applying the extracted tobacco residue to the metallic surfaces. In the method of
claim 13, the tobacco residue is extracted in a steam environment. According to appellants, the
tobacco residues are classified as Type IA, “reduce corrosion rate but do not completely prevent
corrosion,” or Type IIA, “provide temporary immunity by delaying onset of corrosion,” corrosion
inhibitors (specification, page 9, lines 7-8, and Figure 1).
The reference relied on by the examiner is:
Merrell 264,182 Sep. 12, 1882
The examiner has advanced the following grounds of rejection on appeal:
claims 1 through 23 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply
with the enablement requirement; and
claims 1, 3, 4, 8, 13, 15, 16 and 19 stand rejected under 35 U.S.C. § 103(a) as being obvious in
view of Merrell.
Appellants state in their brief (page 2) that the appealed claims in each ground of
rejection “are grouped together regarding” that ground of rejection. Thus, we decide this appeal
based on appealed independent claims 1 and 13. 37 CFR § 1.192(c)(7) (1995).
We affirm the ground of rejection under § 103 and reverse the ground of rejection under
§ 112, first paragraph, enablement requirement.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellant’s brief1 for a complete exposition thereof.
Opinion
We first consider the ground of rejection under § 112, first paragraph, enablement. It is
well settled that under this statutory provision, the examiner has the burden of providing a
reasonable explanation, supported by the record as a whole, why the assertions as to the scope of
objective enablement set forth in the specification are in doubt, including reasons why the
description of the invention in the specification would not have enabled one of ordinary skill in
this art to practice the claimed invention without undue experimentation, in order to establish a
prima facie case under the enablement requirement of the first paragraph of § 112. See In re
1 We have considered the brief filed November 4, 1997 (Paper No. 14).
- 2 -
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007