Appeal No. 1997-1551
Application No. 08/235,597
skill in the art a modification of the prior art so that the dry sorbent passes into the wet scrubber means
as required in the presently claimed process. Without such evidence, the prima facie determination of
obviousness for the claimed invention as a whole cannot stand. See In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ 2d 1614, 1618 (Fed. Cir. 1999). No suggestion has been shown in the prior art as to
the desirability of making such a modification to the presently claimed process as a whole. See In re
Brouwer, 77 F.2d 422, 425, 37 USPQ 2d 1663, 1666 (Fed. Cir. 1995).
The prior art cited by the examiner can be seen as Ateaching away@ from the presently
claimed invention on this point. As discussed above, both Steag and Peterson teach the interception of
particles downstream from the dry cleaning or sorbent step with either a filter or electrostatic
precipitator. Interception suggests that the sorbent particles have no other use, which Ateaches away@
from the downstream use of those particles. As also discussed above, Kohl lists several drawbacks to
the Ain situ calcination of limestone@ and the Aconcept of combining fly ash particulate removal with
the SO2 removal scrubber@ (p. 307, para. 4, through p. 309). Those drawbacks would further
Ateach away@ from the downstream use of particles. Prior art references must be considered in their
entireties, i.e., as a whole, including portions that would lead away from the claimed invention. See
W.L. Gore & Associates, Inc. v. Garlock, 721 F. 2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir.
1983), cert. den., 469 U.S. 851 (1984).
NEW GROUND OF REJECTION UNDER 37 C.F.R. ' 1.196(b)
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