Appeal No. 2006-2387 Page 5
Application No. 10/304,514
produced by oxidation.”) and col. 3, lines 2-3 (“Specific examples of the inorganic acid
include . . . sulfuric acid.”).
As Appellant has pointed out, Ferrier’s composition comprises an acid, preferably
a mineral acid such as sulfuric acid. See Ferrier, col. 5, lines 11-14. Since Ferrier’s
composition already contains an acid that would accomplish the goals of adjusting pH
and dissolving copper produced by oxidation, we do not agree with the examiner’s
position that a person of ordinary skill in the art would have found it obvious to add
cinnamic acid to the composition in order to do the same things.
At best, Arimura might have suggested substituting cinnamic acid for the sulfuric
acid that is preferred in Ferrier’s composition. As Appellant points out, however, “even if
the organic acid of Arimura et al. was substituted for the acid of Ferrier, the resulting
composition would still not contain all of the elements of Applicant’s claimed invention,”
Appeal Brief, page 8, because it would not contain an inorganic acid. Thus, even that
modification of the prior art would not show that the present claims would have been
prima facie obvious.
The examiner also rejected claims 27-36 under 35 U.S.C. § 103 as obvious in
view of Ferrier, Arimura, and Fairweather.3 The rejection, however, relies on the same
rationale as the rejection of claims 1-26. The examiner has pointed to nothing in
Fairweather to make up for the deficiency discussed above. The rejection of claims 27-
36 is reversed for the reasons discussed above.
3 Fairweather, U.S. Patent 6,036,758, issued March 14, 2000
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007