Appeal No. 1998-3386
Application No. 08/265,698
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration
to the appellants’ specification and claims, and to the respective positions
articulated by the appellants and the examiner. We make reference to the
examiner’s Answer1 for the examiner’s reasoning in support of the rejection. We
further reference appellants’ Brief2, and appellants’ Reply Brief3 for the appellants’
arguments in favor of patentability.
THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992).
The main issue in this appeal is whether Lackner teaches “applying a
pressure” to one side of a membrane so as to force the reaction intermediate
across the membrane into a compound-containing waste stream. The examiner
states (Answer, page 5) “that pressure exists, as osmotic pressure, and [a]ppellants
have merely optimized the pressure.” The specification discloses (page 8) that
“[w]hile the present invention contemplates that the reactive intermediate may
passively travel through the membrane, this approach is inefficient. … It is preferred,
therefore, that the intermediate be subjected to a force to drive it across the
membrane.” Therefore, it appears to us that appellants intend some force greater
than diffusion or osmosis when they use the phrase “applying a pressure” in the
1 Paper No. 28, mailed March 23, 1998.
2 Paper No. 27, received November 7, 1997.
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