Appeal No. 1997-1734
Application No. 08/215,259
contamination and isolation or efficiency of moving
the extracted material are not even discussed in any
of these references. Thus, no motivation is
disclosed for modifying the references or combining
the references in any way. [Appeal brief, p. 15.]
The appellants further argue:
Even assuming arguendo that a person of ordinary
skill in the art would know of all of the
components, that is not enough for a prima facie
case. There must be a rationale or logic that would
cause a person of ordinary skill in the art to make
such a combination. [Appeal brief, p. 18.]
We agree with the appellants (appeal brief, page 19) that
the examiner has not made out a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103. A claimed
invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art” (emphasis added).
35 U.S.C. § 103(a)(1995); Graham v. John Deere Co., 383 U.S.
1, 14, 148 USPQ 459, 465 (1966). The analysis of whether the
claimed subject matter as a whole would have been obvious to a
person having ordinary skill in the art over the prior art
rests on several factual inquiries including: (1) the scope
and content of the prior art; (2) the differences between the
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