Ex parte SINIAKEVITH - Page 7




                 Appeal No. 1997-0793                                                                                                                   
                 Application 08/107,633                                                                                                                 


                 separator is separated in the dust separator into a                                                                                    
                 combustible gas stream, which passes through cooler 22, and a                                                                          
                 hot particulate stream (18).                                                                                                           
                          Step e: At least a part of the hot particulate stream                                                                         
                 from the dust separator is applied to the carbonization                                                                                
                 chamber by way of superheating chamber 24 and pipe 4 (col. 3,                                                                          
                 lines 16-20; figure 1).4                                                                                                               
                          Appellant argues that Roetheli does not indicate what the                                                                     
                 combined stream is used for and that, therefore, the                                                                                   
                 disclosure of a combined stream has nothing to do with the                                                                             
                 claimed subject matter (brief, page 8).  This argument is not                                                                          
                 well taken because the relevant question is whether the                                                                                
                 applied prior art would have fairly suggested, to one of                                                                               
                 ordinary skill in the art,                                                                                                             


                 appellant’s recited combining and separating steps.  As                                                                                
                 discussed above, these steps would have been fairly suggested                                                                          
                 to such a person by the applied prior art.  Appellant further                                                                          

                          4Appellant’s claim 1 does not require that the hot                                                                            
                 particulates are fed directly to the reactor or that the hot                                                                           
                 particulates which enter the reactor are in a stream which has                                                                         
                 the same composition as that which exits the separator.                                                                                
                                                                         -7-7                                                                           





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