Appeal No. 2001-0849 Page 5
Application No. 08/990,120
between the claims. As a result, not all the differences between the claimed
invention and prior art have been identified and addressed. “All words in a claim
must be considered in judging the patentability of that claim against the prior art.” In
re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
For example, examiner makes the point that the “temperature range of –70
to 800C by [Durst] embrace a temperature range of 60 to 900C”. This applies to only
two of the claims. The rest of the claims either have no temperature range at all,
which raises the question of why Durst was applied to those claims, or provide for
an even more narrow range of temperatures, which has been completely ignored.
In another example, even though the pH limitation of 0.5 to 5.0 or 0.5 to 0.1,
which appears in all the claims, has been addressed (but inadequately as we
discuss infra), examiner addresses it in relation to a suggestion made in Shanklin to
use a weak acid. However, the suggestion made in Shanklin to use a weak acid is
in the context of a reaction involving a perborate oxidizing agent. However, not all
the claims are directed to using a perborate oxidizing agent. The claims directed to
using percarbonate are not addressed. Examiner never explains how one of
ordinary skill would derive a reaction using a percarbonate oxidizing agent
conducted at a pH of 0.5 to 5.0 or 0.5 to 0.1 from the Shanklin disclosure involving a
perborate.
Also, there are numerous limitations in the dependent claims, which have
simply not been touched upon. Claim 7, for instance, requires the pH to be
maintained by adding hydrochloric acid to the reaction mixture of sulfide and
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