Appeal No. 1997-0664
Application No. 08/280,945
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998)(citing In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987)). The suggestion or
motivation may come from the prior art references themselves,
from knowledge by those skilled in the art that certain
references are of special interest in a field, or from the
nature of the problem to be solved. Rouffet, 149 F.3d at
1355-56, 47 USPQ2d at 1456.
In the case before us, the examiner submits that one of
ordinary skill would have found it obvious to add urea to
Holley’s spent pickling acid before it is sprayed into
reaction chamber, as suggested by Burton, in order to remove
undesirable NO compounds (answer, pages 5-6). As pointed out
x
by the appellants (brief, page 9), however, Burton relates to
a conventional combustion process, not to a process of
regenerating hydrochloric acid in which the thermal
decomposition of iron chloride is carried out. In fact, none
of the relied upon prior art references identify the same
problems with which the appellants are concerned (i.e., the
problems of chlorine and NO formation in the types of
x
processes contemplated by the appellants). In re Sponnoble,
405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969) (“[A]
patentable invention may lie in the discovery of the source of
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