Appeal No. 98-2417
Application 08/570,894
omission of an element and its function in a combination
is an obvious expedient if the remaining elements
perform the same functions as before,
we observe that the Court has also recognized that this is not
a mechanical rule, and that such language in Karlson was not
intended to short circuit the determination of obviousness
mandated by 35 U.S.C. § 103. See In re Wright, 343 F.2d 761,
769-70, 145 USPQ 182, 190 (CCPA 1965). Thus, as in reviewing
any obviousness determination, we must first look to the prior
art and ascertain whether the prior art teachings would appear
to be sufficient to one of ordinary skill in the art to
suggest making the claimed substitution or other modification
proposed by the examiner. See, e.g., In re Lalu, 747 F.2d 703,
705, 223 USPQ 1257, 1258 (Fed. Cir. 1984).
In this particular case, we share appellant's view that
the examiner's modification of Rudick in the specific manner
posited in the final rejection and examiner’s answer is based
on the hindsight benefit of appellant's own teachings and not
on anything fairly suggested by the reference itself.
Moreover, as we noted above, the critical nature of the
diaphragm, separator, etc. within the second compartment of
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