Appeal No. 1998-0425 Page 16
Application No. 08/272,527
double patenting is not patentably distinct from a claim in an
inventor's earlier patent. Since in making the determination
that it would have been obvious to modify the claimed
apparatus of U.S. Patent No. 4,889,620 to include the sealing
means, retaining means, and/or measuring means recited in the
claims of U.S. Patent No. 5,328,601 the examiner relied on an
inappropriate mode of analysis in attempting to establish
"obviousness-type" double patenting, we will not sustain the
examiner's specific rejection of claims 2, 3 and 11 to 32.5
5We note that the claims under appeal recite limitations
(e.g., acid resistant supply piping having a synthetic resin
inner surface (claim 2); synthetic thermoplastic or thermoset
resin plenums (claims 3, 11 and 23); details of the diffusion
plates; etc.) not found in any claim in U.S. Patent Nos.
4,889,620 and 5,328,601. The examiner's mere assertion that
these differences would have been obvious to one of ordinary
skill in the art is not sufficient to establish that such
differences would have been obvious since the examiner has not
provided any evidence to support that assertion. Evidence of
a suggestion, teaching, or motivation to modify a reference
may flow from the prior art references themselves, the
knowledge of one of ordinary skill in the art, or, in some
cases, from the nature of the problem to be solved, see
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), although
"the suggestion more often comes from the teachings of the
pertinent references," In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998). The range of sources
available, however, does not diminish the requirement for
actual evidence. That is, the showing must be clear and
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