Appeal No. 2006-2485 Page 15
Application No. 10/925,646
teach the inventive nexus of the claims even if the individual elements thereof might be
within the scope of the claims. For example, if the reference teaches that all three of A,
B, and C are required for a specific function, and it is being cited . . . merely to show that
B was known, it is proper to state that such a reference would not necessarily suggest
experimenting with B in combination with other elements.” Reply Brief, page 5.
As pointed out by Appellants, Waller teaches sodium sulphite in combination with
other components. However, based on the fact that it was known to add oxygen
scavengers to protect metal surfaces from corrosion, we agree with the examiner that it
would have been obvious to include a known oxygen scavenger, such as sodium
sulphite, in the composition of Scheurman.
Appellants also argue that Waller does not suggest “that the two step process of
the present invention would likely be successful in removing iron deposits. Since
neither [Scheurman] nor [Waller] taken alone or in combination teach the two step
aspect of the claims of the present invention, and since they also do not teach that [sic,
the] basic elements of the invention, namely that a closed system can be cleaned just
by first depleting the oxygen of the system and then adding a dialkylhydroxylamine, then
the claims of the present invention are not obvious over [Scheurman] in view of
[Waller].” Appeal Brief, page 12-13. However, as discussed above, claim 1
encompasses methods in which the steps are conducted simultaneously. For the same
reasons, claims 5 and 15 encompass methods in which the steps are conducted
simultaneously. Thus, this argument is not persuasive.
The examiner has established a prima facie case that it would have been
obvious to include sodium sulphite and dispersant in the composition of Scheurman.
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