Appeal 2007-2364
Application 09/879,613
concentrations avoids "deleterious effects" associated with the higher range
used in the prior art (FF 3–5; Specification at 5). The burden is on the
Examiner to establish an adequate basis to question the adequacy of
Appellant's disclosure. In re Marzocchi, 439 F.2d 220, 223–4, 169 USPQ
367, 370 (CCPA 1971). Assertions in a disclosure must be met with
evidence, not by mere counter-assertion or examiner argument.
The efficacy of dilute hydrogen peroxide as a germicide is well
known, as shown by the disclosure in the Dispensatory that a 1:1000
solution is effective (FF 28). Thus, we have no difficulty finding that when
Onodera recites that "Examples of bactericidal liquid include an aqueous
solution of 1 to 5% hydrogen peroxide" (FF 21; Onodera at 3:8-9; emphasis
added), one of ordinary skill in the art would have recognized that still more
dilute samples would have been expected to be bactericidal, and therefore
efficacious. Moreover, the Examiner found that Onodera is concerned with
substantially the same problem as Skoufis—namely, the necessity of
sterilizing and storing sponges for clean room use for a period of several
months to half a year or so (FF 20). We emphasize that this period is
comparable to the period addressed by Skoufis (six month to a year or more:
FF 10). Thus, there is a sound basis for the finding that the artisan would
have reasonably expected success using lower concentrations of hydrogen
peroxide as a germicide that are within the range recited by Applicant.
We reject Skoufis’s contention that Onodera and Paley teach away
from the claimed invention. We find nothing in either reference that warns a
person of ordinary skill in the art not to use low concentrations of hydrogen
peroxide known to be germicidal. Cf. Para-Ordnance Manufacturing, Inc.
v. SGS Importers International, Inc., 73 F.3d 1085, 1090, 37 USPQ2d 1237,
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