Ex Parte Fulmer et al - Page 13


            Appeal No. 2006-2485                                                        Page 13              
            Application No. 10/925,646                                                                       

            claims.”  Appeal Brief, page 10.  Appellants also argue that the claim limitations are not       
            inherent in Veldman because “VELDMAN teaches at, for example, column 4,                          
            lines 26-42, adding an oxygen scavenger and alkanol amine together, not in separate              
            steps” and “there is no evidence that the amounts of materials added to the closed loop          
            system were sufficient to cause the iron deposits to release from the surface of the             
            closed loop system.”  Reply Brief, page 5.                                                       
                   However, for the reasons discussed above, we conclude that Veldman teaches                
            applying the method to a system having surface iron deposits and such that iron                  
            deposits release from the surface of the system.  Thus, we conclude that the examiner            
            has set forth a prima facie case that Veldman anticipates claim 1.  Appellants’                  
            arguments do not overcome the prima facie case of anticipation.  Therefore, we affirm            
            the rejection of claim 1 over Veldman.  Claims 7-10, 22, and 23 fall with claim 1.               
            4.  Obviousness                                                                                  
                   The examiner has rejected claims 2-5, 11, 13, 15, 16, 19, and 20 under 35                 
            U.S.C. § 103 as obvious over Scheurman in view of Waller.3  We will focus on claims 5            
            and 15.  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 15 substantially corresponds to    
            claim 1, except that it recites a further step of “introducing a dispersant into the system.”    
                   The examiner notes that “Scheurman fails to teach the addition of a dispersant            
            and a sulfite salt,” but argues that Waller “teach[es] the removal of iron oxide deposits        
            using a reducing agent which includes sodium sulfite, DEHA, and hydrazine (col. 4,               
            lines 54-57[)] in combination with a dispersant (Abstract, col. 4, lines 63-65).  It would       
                                                                                                             
            3 Waller et al., U.S. Patent No. 4,810,405, issued March 7, 1989.                                





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