Appeal No. 1998-1219
Application 08/419,317
these steps would be separate and in the order as recited in
claim 1 on appeal.
For the foregoing reasons and those set forth in the
Brief, we determine that the examiner has not presented a
prima facie case of obviousness. Accordingly, the rejection
of claims 1-7 under section 103 over Keefer is reversed.
All other rejections on appeal have Keefer as the primary
reference. Dandekar, JP ‘436, Sauvion, Stönner and Kikuchi
have been applied as secondary references by the examiner to
show various aspects of the dependent claims (see the Answer,
pages 4-6). However, none of these secondary references
remedy the deficiencies discussed above with respect to
Keefer. In the “Response to Argument” section of the Answer
(page 7), the examiner notes that Dandekar teaches isothermal
conditions but fails to refer to any specific portion of this
reference. Dandekar teaches incorporation of controls “to
minimize the temperature increase” but fails to disclose or
suggest isothermal operation (col. 7, ll. 36-38).
Additionally, the examiner has failed to identify any factual
basis or reasoning to support the proposed motivations or
8
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