Appeal No. 96-2178
Application 08/146,901
through 7 and 12 through 17 within the meaning of § 102(b). Furthermore, we find no teachings in
Grant, taken alone or combined with Decker, which would have provided one of ordinary skill in the
art with both the suggestion and the reasonable expectation of success of modifying the “filtration
module 62” in order to arrive at the claimed fluid filter as a whole encompassed by claims 8 through 10
and used in the method of claims 18 through 20. Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531.
Indeed, with respect to Decker, the examiner has not explained on this record why the combination of
“sloped walls” of the tube filters of Decker and the “ribbon elements 58” of the “filtration module 62”
of Grant would have resulted in the claimed fluid filters. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Turning now to claims 11 and 21, we agree with appellants (brief, pages 11-14) that Kagawa
does not disclose the four process steps specified in claim 11 as we construed this claim above.
Kagawa teaches a process wherein a specified film is adhered to a fabric by hot pressing, which sole
step causes the film to shrink, as well as simultaneously makes the film microporous (e.g., abstract).
The examiner has not provided on this record any evidence or scientific explanation explaining why one
of ordinary skill in this art would have been motivated to modify the process of Kagawa in order to
arrive at the claimed invention. Indeed, even if the examiner had established that one of ordinary skill in
this art would have recognizd the alleged equivalence of the “formation of the opening being by cutting”
and micropore formation by heat treatment (final rejection, Paper No. 8, page 3) there still remains
several other differences between the claimed and prior art processes which have not been addressed.
We further fail to find on this record any evidence or scientific explanation establishing that the resulting
filter of the Kagawa process is the same or substantially similar to the filter prepared by the process of
claim 11 and claimed in claim 21. Compare In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977).
Accordingly, it is inescapable that the only description of and the only direction to appellants’
claimed invention on the record before us is supplied by appellants’ own specification.
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