Appeal No. 2003-0715
Application No. 09/873,806
(b) hydrolyzing the beads by treating the beads with a
hydrolysis agent such as hydrochloric acid.
(Column 5, lines 7-32.) Nagai also teaches that the “loaded”
beads (i.e., the spent or “exhausted” beads), which the examiner
found to be the same as the appellants’ starting resin
“substantially in neutralized salt form” recited in step (a) of
appealed claim 1, may be regenerated for re-use by treatment
with a regenerating agent such as hydrochloric acid. (Column 6,
lines 62-66.) Nagai further teaches that “[t]he resin can be
used repeatedly after being given an ordinary pre-treatment such
as washing with alkali, water, acid and water.” (Column 6,
lines 66-68.)
Given these teachings in the prior art, we share the
examiner’s view (answer, page 6) that the subject matter of
appealed claim 1 would have been obvious to one of ordinary
skill in the art within the meaning of 35 U.S.C. § 103.
Specifically, we agree with the examiner that one of ordinary
skill in the art would have been led, prima facie, to determine
(by mere routine experimentation) the optimum relative amounts,
conditions, and purification times for the steam treatment in
either Ballard or Nagai, thus arriving at a process encompassed
by appealed claim 1. In re Peterson, 315 F.3d 1325, 1330, 65
USPQ2d 1379, 1382 (Fed. Cir. 2003)(“The normal desire of
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