Appeal No. 2000-0110
Application 08/818,447
the teachings from the prior art itself must appear to have
suggested the claimed subject matter to one of ordinary skill in
the art).
Regarding the pH requirements in the appellants’ claims the
examiner argues: “To stop the electrolysis at any point after the
feeding of the water containing the electrolyte and this final
point of pH and ORP [oxidation reduction potential] would not be
patentable modification, because one having ordinary skill in the
art would know and could easily optimize based upon routine
experimentation at what time to stop the electrolysis and obtain
the desired product water” (answer, page 5). Even if one of
ordinary skill in the art could easily optimize Shiramizu’s
method as argued by the examiner, the examiner has not explained
how that optimization would have led to the simultaneous recovery
of acid water having a pH of about 3 to 4 and weak alkaline water
having a pH of from 7 to 9.5. The record indicates that the
motivation and enablement for optimizing Shiramizu’s method to
simultaneously recover acid water and weak alkaline water having
those pH values comes from the appellants’ disclosure in their
specification rather than coming from the applied prior art and
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007