Ex parte ROSS, JR., et al. - Page 4

          Appeal No. 96-0037                                                          
          Application 08/237,224                                                      

          3.  This difference is acknowledged by the examiner, who states             
               Barnes differs from the claimed invention in that it is                
               silent on the opening of the fluid outlet being                        
               upwardly disposed (Answer, page 3).                                    
               In response to the appellants' argument that because Barnes            
          teaches an orientation that is opposite to that claimed it does             
          not provide the basis for a conclusion that the subject matter of           
          the claims would have been obvious, the examiner sets forth two             
          theories.  The first is that                                                
               it would have been an obvious choice of design for one                 
               of ordinary skill in the art to orient the gas outlet                  
               of Barnes upwardly, instead of downwardly, because an                  
               upwardly pointed gas outlet is functionally equivalent                 
               to a downwardly pointed outlet when the catalyst                       
               particle velocity is sufficiently high (Answer, page                   
          We cannot agree.  First of all, the examiner has presented no               
          evidence that the two orientations are "functionally equivalent."           
          Moreover, evidence and information has been furnished by the                
          appellants in the specification and by way of declaration and               
          explanation that they are not functionally equivalent, in that              
          the claimed orientation provides an increase in separation                  
          efficiency over that disclosed by Barnes (specification, pages 10           
          and 11; Silverman declaration; Brief, pages 7 and 8).                       


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