Ex Parte YOSHIDA et al - Page 8




          Appeal No. 1998-1278                                                        
          Application No. 08/603,186                                                  


          effectiveness and working capacity.  The phrase “an absorbent               
          solution consisting essentially of an aqueous hindered amine                
          solution” in claims 1 and 10 does not preclude the presence of              
          the tertiary amine in the claimed absorbent solution.  The                  
          appellants have not demonstrated that the basic and novel                   
          characteristics of their invention would be materially affected             
          by the presence of the tertiary amine in the claimed absorbent              
          solution.  See, e.g., In re De Lajarte, 337 F.2d 870, 874, 143              
          USPQ 256, 258 (CCPA 1964).                                                  
               The appellants argue that Pearce does not specifically                 
          mention employing a carbon steel acid gas purification apparatus.           
          See the Brief, page 15.  However, we find that Pearce clearly               
          teaches that its corrosion inhibitors are useful for all                    
          conventional acid gas purification metal apparatuses, inclusive             
          of a conventional carbon steel acid purification apparatus, as              
          taught by Butwell, page 4, and Foroulis, page 23.  Moreover, we             
          find that Butwell teaches carbon steels are a good corrosion                
          resistant material useful for forming an acid purification                  
          apparatus (column 4, lines 33-44) even though, according to                 
          Foroulis (page 23), they can still be corroded during the acid              
          gas purification process.  Thus, we concur with the examiner that           
          it would have been prima facie obvious to employ conventional               
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