Appeal No. 2006-2485 Page 6
Application No. 10/925,646
We are not persuaded by this argument for two reasons. First, we have reviewed
the § 112 arguments made in the response filed on April 5, 2005, but do not find any
clear disclaimer of a one-step process. In fact, Appellants argued that a separate step of
contacting a system with an oxygen scavenger is “not essential because the invention
will still work by adding enough DAHA.” Response filed on April 5, 2005, page 3.
Second, “in proceedings before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the specification.” In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). It is improper to read limitations
into the claims during prosecution based on arguments presented by the applicant, even
if such arguments may create a prosecution history estoppel after the patent issues.
Claim 5 depends from claim 1 and recites that the oxygen scavenger is a sulphite
salt, a bisulfite salt, or a mixture of them.
Claim 6 depends from claim 5 and recites that the oxygen scavenger is sodium
bisulfite.
Claim 15 substantially corresponds to claim 1, except that it recites a further step
of “introducing a dispersant into the system.”
Claim 21 ultimately depends from claim 15 and recites that the dispersant is a
copolymer of acrylic acid and 2-acrylamido-2-methyl propane sulfonic acid.
2. Scheurman
The examiner has rejected claims 1, 7-9, and 22 under 35 U.S.C. § 102(b) as
anticipated by Scheurman.1 The examiner notes that “Scheurman teaches a method of
inhibiting corrosion in a closed loop system comprising a first component hydrazine and
1 Scheurman, III, U.S. Patent No. 5,589,107, issued December 31, 1996.
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