Appeal No. 96-1802 Page 6
Application No. 08/060,922
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we turn to the rejection of the
only independent claim on appeal (i.e., claim 12).
The examiner determined (answer, pp. 4-5) that
[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to modified
[sic] the location of the filter element as claimed.
The appellant argues (brief, pp. 8-12) that the subject
matter of claim 12 would not have been suggested by the
teachings of Hölzl. We agree. In that regard, we see no
evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill
in the art, that would have suggested to one of ordinary skill
in the art at the time the invention was made to provide a
single heater extending substantially the length of the filter
element and the measured gas line (i.e., a line downstream of
the filter element). Instead, it appears to us that the
examiner relied on impermissible hindsight in reaching the
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