Appeal No. 1996-1088
Application 08/251,999
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84.
The examiner has not provided the required explanation as
to why the prior art itself would have fairly suggested, to
one of ordinary skill in the art, the modification proposed by
the examiner. Saito requires that the voltage applied to the
electrolytic cell is that which is obtained by multiplying a
predetermined voltage (V ) for obtaining an ion concentration
n
which is the same as that in reference water, by a
constant (k) which is the ratio of the voltage drop of the
reference water to the voltage drop of the examined water
(col. 5, line 60 - col. 6, line 5). The examiner has not
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