Appeal No. 2006-2485 Page 7
Application No. 10/925,646
a second component hydroxylamine. In col. 4, lines 50-55, Scheurman teaches
decreasing the iron levels in the boiler system.” Examiner’s Answer, page 3. “In col. 5,
lines 5-20, Scheurman teaches adding the composition to the boiler and reducing the
dosage of the composition when the total iron level is reduced to a non-detectable
level.” Examiner’s Answer, page 7. The examiner reasons that “Scheurman teaches
using the same composition and performing the same method steps, therefore, the
limitations are inherently met by the teachings of Scheurman.” Id.
We conclude that the examiner has presented a prima facie case that claim 1 is
anticipated. Scheurman describes a “method for inhibiting corrosion of ferrous metal
surfaces in an aqueous system,” such as a closed loop cooling system. Col. 1,
lines 58-59; col. 2, lines 16-17. The method comprises adding to the system water a
first component selected from carbohydrazide, hydrazine, and their water-soluble salts
and a second component selected from certain hydroxylamine compounds, most
preferably N,N-diethylhydroxylamine (DEHA). Col. 1, lines 60-67; col. 2, lines 53-56.
Appellants argue that Scheurman “teaches passivat[ing] iron and steel surfaces
(col. 1, lines 5-9),” which is defined in Scheurman, at column 1, lines 29-34, as
protecting metal surfaces from “attack by oxygen or other chemicals.” Appeal Brief,
page 6. Appellants argue that passivating is “very different from the method of the
present invention,” which is concerned with “clean[ing] surfaces by removing iron
deposits, not passivat[ing] them.” Id. In particular, “[i]n passivation, the iron deposits
that are present stay in place and the surface of the system is treated to mitigate or
eliminate further corrosion.” Appeal Brief, page 7.
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