Appeal No. 1997-3056
Application No. 08/377,966
OPINION
We perceive a number of flaws in the rationale used by the
Examiner in constructing the obviousness-type double patenting
rejections before us. One of the most fundamental errors made by
the Examiner relates to his aforequoted conclusion that “[i]t would
have been within the skill of the art to modify USP 5,173, 264
[sic, to modify the claimed apparatus of USP 5,173,264] to use
a well known commercially available filtration unit, such as the
MiniKap 500 module, to gain the advantages taught above.” As
properly indicated by the Appellant, the apparatus defined by the
claims of the Zaromb patent and the filtration unit described in
the MiniKap brochure are incompatible in terms of being combined,
in the absence of hindsight, in such a manner as to result in an
apparatus of the type defined by the rejected claims on appeal.
In this regard, it is appropriate to emphasize that the
Examiner has offered little if any specific insight on how these
two apparatus structures would have been combined by one with
ordinary skill in the art. Moreover, we perceive no suggestion or
motivation, in the absence of hindsight, which would have led an
artisan with ordinary skill to combine these structures in such a
manner as to yield an apparatus of the type here claimed.
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