Appeal No. 1999-0959
Application No. 08/415,166
requirement. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d
1111, 1116 (Fed. Cir. 1991). The rejection under 35 U.S.C. § 112, first
paragraph, is reversed.
2. The obviousness rejection
The examiner rejected all of the claims as obvious over Schwinn ‘187 and
Schwinn ‘603. The examiner appears to acknowledge that neither of the
Schwinn references teaches or suggests using calcium ions or a chelating agent
at the concentrations recited in the claims,2 but argues that
[i]t would have been within the realm of the artisan to adjust the
amounts of calcium and chelating agent at the time of combining
such teachings from amounts taught by each patent for individual
use, as such adjustment would be routine when combining the
teachings of two references.
Examiner’s Answer, page 7. As we understand it, the examiner’s position is that
the claims are prima facie obvious because it would have required only routine
skill to adjust the concentrations of calcium and chelating agent in order to obtain
a concentration within the range recited in the claims.
“In proceedings before the Patent and Trademark Office, the Examiner bears the
burden of establishing a prima facie case of obviousness based upon the prior art.” In
re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “‘Under
2 The examiner states that “[w]hile the 2 patents do not teach the amounts of chelating agent and
calcium ions as claimed, they are either within or about the ranges claimed.” Examiner’s Answer,
page 7. This statement is self-contradictory. Either the references “do not teach the amounts of
chelating agent and calcium ions as claimed,” or they teach amounts that are “within . . . the
ranges claimed;” they cannot do both. We note that Schwinn ‘187 discloses use of chelating
agent at a concentration of “0.01 to 0.3 mole/l” (col. 2, line 23), i.e., 10 to 300 mM, and Schwinn
‘603 teaches use of calcium at “0.05 to 2.0 moles/l (col. 2, line 7), i.e., 50 to 2000 mM. The
examiner therefore had it right when she stated that “the 2 patents do not teach the amounts of
chelating agent and calcium ions as claimed.”
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