Appeal No. 96-0172
Application 08/076,000
ordinary skill in this art to modify the process of Foral by “heating the wet gaseous mixture in a heater,
after conducting said mixture from the regenerator and before conducting it to the knockout vessel”
(answer, page 4). However, as pointed out by appellants, Pobst does not address the combustion of
gases as in Foral’s apparatus and method (principal brief, pages 7-8), and we find no suggestion in
Pobst to replace a condensation system as found in Foral with a heated system as claimed by
appellants.
Second, we fail to find in the record, any reason why one of ordinary skill in this art would have
modified the teachings of Foral as proposed by the examiner, in relying on the combined teachings of
the applied references for the “concept of flaring Foral’s combustible gas mixture in a flare rather than
burning it to provide boiler duty for Foral’s reboiler 26 (fig. 2)” (answer, page 13; see also page 5). As
pointed out by appellants, such a modification “to achieve [appellants’] invention would . . . require a
redesign of Foral” (reply brief, page 3) and is not suggested by the applied references. Indeed, such a
modification would have to provide a different source of fuel for the burner of Foral’s reboiler as well as
provide for a different manner of disposing of the waste vapors. The examiner has provided no reason
why one of ordinary skill in this art would have found the motivation in Seebold or in Pobst to make the
proposed modifications of Foral.
It is well settled that the “mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art suggested the desirability of
the modification.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Without such a suggestion in the prior art, the examiner has engaged in hindsight in concluding that the
claimed invention is obvious over the combination of references. Id. Because Foral, Pobst and
Seebold do not separately or severally provide the motivation to modify the apparatus of Foral to arrive
at the claimed method, it is manifest that the only direction to appellants’ claimed invention as a whole
on the record before us is supplied by appellants’ own specification.
The examiner’s decision is reversed.
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