Appeal No. 1997-4397
Application 08/395,698
continuous operation, whether or not the preferred use of that
device is in fact continuous" (EA4). We agree that if the
structure of Sorensen has a continuous passage structure that
inherently (i.e., without modification) would permit
continuous operation, the "wherein" clause of apparatus
claims 1 and 8 would be met. On the other hand, if Sorensen
requires modification to provide continuous operation, it
would be necessary to provide some motivation. See
In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed.
Cir. 1990) ("While Mathis' apparatus may be capable of being
modified to run the way Mills' apparatus is claimed, there
must be a suggestion or motivation in the reference to do
so."). Method claim 13 requires a step of "continuous"
operation which is not disclosed in Sorensen and, so, is not
met. Sorensen discloses that when the pressure in air line 31
is relieved, a new pore gas/liquid sample penetrates into the
chamber 18 and its extension 20, following which the next
working cycle is repeated (col. 7, lines 18-28). Since there
appears to be free flow from the chamber 18 into extension 20,
it appears the downhole end of the apparatus in Sorensen
permits continuous operation.
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