Ex parte HOLMQUIST-BROWN et al. - Page 5




          Appeal No. 1997-0153                                                        
          Application No. 08/375,681                                                  


          determined, the differences between the prior art and the                   
          claims at issue are to be ascertained.  Graham v. John Deere                
          Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).                           


           Based on our analysis and review of Schlobohn and claim                    
          1, it is our opinion that the only difference is the                        
          limitation of the specific type of filter (i.e., a bonded                   
          sorbent filter element).                                                    


               With regard to this difference, the examiner determined                
          (answer, p. 3) that it would have been obvious to one of                    
          ordinary skill in the art, at the time the invention was made,              
          to substitute the bonded sorbent filter element of Braun for                
          element “2” of Schlobohn.  We agree.                                        
                                                                                     
                    The appellants urge that the use of a bonded sorbent              
          filter element is not taught by Schlobohm (brief, page 3). We               
          agree. However, the test for obviousness is what the combined               
          teachings of the references would have suggested to one of                  
          ordinary skill in the art.  See In re Young, 927 F.2d 588,                  
          591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller,                
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