Appeal No. 96-0172
Application 08/076,000
essentially based on the combined teachings of Foral, Pobst and Seebold3 (answer, 3-8). It is well
settled that the examiner may satisfy his burden of establishing a prima facie case of obviousness under
§ 103 by showing some objective teachings or suggestions in the prior art taken as a whole or that
knowledge generally available to one of ordinary skill in the art would have led that person to combine
the relevant teachings of the applied prior art in the proposed manner to arrive at the claimed invention,
including each and every limitation of the claims, without recourse to the teachings in appellant’s
disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47
(Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596,
1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32
(Fed. Cir. 1988). In the appeal before us, the examiner has failed to carry his burden.
We disagree with the examiner that one of ordinary skill in this art would have modified the
process of Foral in view of the teachings of Pobst and Seebold and thus arrived at the claimed
invention4 for the two reasons identified by the examiner as the differences between the claimed
invention and Foral (answer, page 4). First, we construe steps (a) through (c) of the claimed method
encompassed by claim 17 to require “heating the vaporized mixture” from the “regenerator” prior to
“conducting said vaporized mixture . . . to a liquid collection chamber” (emphasis supplied). In contrary
manner, Foral cools the vapors from the reboiler still in “conventional condenser 48” and collects the
resulting condensed material in “conventional liquid knock-out 52” (e.g., col. 4, lines 68-72, col. 5, lines
59-61, col. 5, line 66, to col. 6, line 23). The examiner has proposed that Pobst would have provided
the motivation to one of
3 The references relied on by the examiner with respect to the grounds of rejection are listed at page 2
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
4 We find that the portion of Foral’s apparatus, as seen from Foral Fig. 1 and cols. 3-7, which pertains
to the steps of claim 17, extends from still column 10 through conduit 46 to condenser 48, thence to the
knock out vessel 52, from which conduit 55 extends to jet ejector 56, and thence from jet ejector 56,
with the addition of fuel gas, through conduit 60 to burner 28 located in the reboiler. We observe that
appellants refer to the “reboiler” as the “reboiler,” the “reboiler still column” and the “regenerator”
(specification, e.g., page 5, line 4, and specification Fig. 2, numeral 40).
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