Appeal No. 94-1098
Application 07/712,581
(answer, page 10).
We cannot support this rationale. It is crystal clear that,
in the normal operation, Stenger is concerned with determining
the concentration of a chemical, carbon dioxide, in a liquid
sample. In contrast, the claimed subject matter is directed to a
method of generating a known concentration of chemical vapor.
The examiner has not adequately explained, and it is not apparent
to us, why one of ordinary skill in the art would have found it
desirable, and thus obvious, to generate a known concentration of
chemical vapor during normal operation of Stenger’s apparatus.
In this regard, the mere fact that the prior art could be
modified to produce the claimed subject matter does not make such
a modification obvious unless the prior art suggests the
desirability of doing so. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984).
In responding to an argument on page 5 of appellants’ brief
that Stenger teaches away from the claimed invention because
producing a known vapor concentration would be directly contrary
to Stenger’s purpose, the examiner theorizes about what might
occur in the event the need should arise to calibrate the
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