Appeal No. 1998-2273
Application 08/504,679
nonenablement based on undue experimentation. We determine that the examiner still has not
carried this burden because the reasons provided under each of the Wands “factors” simply do
not establish that one skilled in this art would have to engage in undue experimentation in order
to practice this straight forward invention in light of the enablement provided to this person in the
written description of appellant’s specification. Accordingly, we reverse this ground of rejection.
We now turn to the ground of rejection under § 103(a). The examiner contends that
Merrell would have disclosed to one of ordinary skill in this art that “[r]esidue is removed from
the tobacco, through the solution and pulping and heating with steam,” and is used in a solution
to inhibit corrosion of the surfaces of a boiler, which the examiner finds to be made of a metallic
material, because “the same materials would come from the extraction process, whether the
solution was acidic or basic,” and while Merrell uses other components in the solution, the “mere
application of tobacco residue is sufficient to meet the requirements of the claims” (answer,
pages 8-9 and 13-15). We agree with the examiner’s position.
We find that the claimed methods encompassed by appealed claims 1 and 13 would
include the use of other components in the extraction and application steps, such as the other raw
materials of Merrell (lines 10-16), in view of the transitional term “comprising” which opens
each of these claims to other steps and ingredients. See, e.g., 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.”). The use of the extracted residue produced by
the process of Merrell when added to the boiler water would act as a Type IIA corrosion
inhibitor, which satisfies the last step of the claimed method as encompassed by each appealed
claim. Indeed, Merrell does use a “steam environment” which satisfies that limitation in claim
13, and on this record it would reasonably appear that the water inside the digester would be at
least slightly “alkaline,” that is, “basic media” as specified in claim 1. We do not find in claim 1
a requirement that the application of the “tobacco residue extracted” must be from an “alkaline,”
that is, “basic media” in which it was extracted, and Merrell does teach that the “product or pulp
is removed or drawn off into cans for use” and then included in the boiler water solution. Claim
13 has no limitation with respect to either the pH of the steam environment or of the solution in
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