Appeal No. 96-3854
Application No. 08/027,872
(Fed. Cir. 1992); Ashland Oil, Inc. v. Delta Resins &
Refractories Inc., 776 F.2d 281, 297 n. 24, 227 USPQ 657, 667
n. 24 (Fed. Cir. 1985). Here, apart from reference to
appellants’ disclosure of the present invention, we find no
such reason, suggestion, or motivation which would have lead
one of ordinary skill in the art to combine the disclosures of
Bach and Madden in the manner proposed by the examiner. The
examiner's assertion that it would have been
obvious to a person of ordinary skill in the art to provide
Bach with the parallel flow path of Madden because the
modification would have involved a minor change and both
references are from the same sampling art seems to us to be an
assertion that the invention as a whole would have been
obvious because the individual parts of the invention were
know in the art. This is clearly an inappropriate rationale
for a conclusion of obviousness.
The examiner's other assertion that one of ordinary skill
in the art would have been motivated to make the Bach flow
parallel in order to return the sample to the main flow is not
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