Appeal No. 2000-1019
Application No. 08/623,852
Bender teaches the process of solubilizing metals
from metal containing material by contacting with
sulfuric acid containing a reducing agent and a carbon
source (see claims 1, 29, 36 and the examples) (id).
Bender differs in that the sulfuric acid
containing hydrofluoric acid is not stated (id).
Pazdej teaches the use of sulfuric acid and
hydrofluoric acid to solubilize metals (see the figures
and claims) (id at page 5).
It would have been obvious to one of ordinary
skill in the art at the time the invention was made to
use sulfuric acid containing hydrofluoric acid to
dissolve metals in the process of Bender because that
is what is taught by Pazdej as desirable (id).
The subject matter as a whole would have been
obvious to one having ordinary skill in the art at the
time the invention was made to select the portion of
the prior art’s range which is within the range of
applicant’s claims because it has been held to be
obvious to select a value in a known range by
optimization for the best results, see In re Aller, 105
USPQ 233 (id).
The subject matter as a whole would have been
obvious to one having ordinary skill in the art at the
time the invention was made to have selected the
overlapping portion of the range disclosed by the
reference because overlapping ranges have been held to
be a prima facie case of obviousness, In re Malagari,
182 USPQ 549 (id).
In response to the examiner’s rejection, the appellants
begin by arguing that
Bender contains no disclosure relating to a process for
recovering metal values which utilizes a reducing agent
and a carbon source which differs from the reducing
agent. The Examiner noted that the claims of the
present invention do not require that the reducing
agent and the carbon source be different materials.
See Office Action, May 6, 1998, p. 4. However,
Appellant has requested that its claims be amended to
more specifically claim this aspect of the present
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