Appeal No. 1997-0305
Application No. 08/286,085
employs a pressure swing adsorption system to remove impurities from the hydrogen-
containing permeate of the separating membrane. Hence, the pressure swing adsorption
system of Doshi, rather than trapping the hydrogen gas, as required by the appealed
claims, adsorbs impurities from the hydrogen stream.
While the examiner recognizes the distinction between the processes performed by
the apparatus of appellants and Doshi, the examiner takes the position that the appealed
claims "are all apparatus claims and what must be dealt with is their claimed structure
versus the structure shown by Doshi." (page 5 of answer). According to the examiner,
there is no difference in structure between the claimed means for trapping hydrogen gas
and the adsorption means of Doshi. In the words of the examiner, "[a]ny suitable
adsorbent material can be used within that adsorption means [of Doshi], which would
include means to adsorb the hydrogen in place of the impurities." (page 5 of answer).
The examiner's error arises from his failure to give proper consideration to the
fundamental principle that an apparatus may be claimed in means plus function language,
and that in order for a reference to form a basis for a rejection of such claim under 35
U.S.C. § 102, the reference must describe, inter alia, means that are capable of
performing the claimed function. Manifestly, in the present case, the pressure swing
adsorption system of Doshi does not perform the claimed function of trapping the
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007